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Hiring A Trademark Attorney

Casual Trademark FAQ Part 2: How to Clear Your Trademark

How To Clear Your Trademark: Part 2

Video Transcript

Hi everybody, and welcome to our casual trademark FAQ series. My name is Tom Willentz, and I’m an attorney who’s been practicing trademark law for over 20 years. I’ve got a lot of experience and I have some tips I’d like to share with you about how to clear your trademark. This is part two in our casual FAQ trademark series, and let’s get right into it.

Trademark Clearance

So, trademark clearance, what does that mean? Trademark clearance means doing your due diligence to see if the trademark you want is available. You need to make sure that you’re not going to be treading on someone else’s prior trademark rights before you start to use a new trademark. Because if you use a trademark that comes too close to another party’s prior trademark, you could wind up in a legal battle with that other person. You don’t want to infringe their prior trademark rights because that could lead you to having to stop using your trademark or even worse, being sued and ending up having to pay money damages. So, it’s very important to clear your trademark properly.

Clearing A Trademark

So, how do you clear your trademark? There are a few ways you can go about it. You can start by doing some searching on your own. I’d say start with a Google search and see what comes up. This is obviously the place to start because you can go right in and put your trademark into the search bar and look at the results yourself. It’s most effective; a Google search that is, is most effective with a fanciful trademark. But you can also use Google to do a basic trademark screening of your proposed arbitrary or suggestive mark, as long as you qualify it with your search terms so that you’re just looking for that arbitrary or suggestive mark in connection with your proposed goods or services.

To review from our last casual FAQ trademark series segment, an arbitrary mark is a word from the dictionary, but it’s a word that has no meaning in connection to your goods or services, such as the classic example “Apple” for computers. And a suggestive trademark is one that may, through the use of imagination thought or perception, suggest a connection to your goods or services but it does not immediately describe them.

So if you do your Google search and you don’t see any obvious conflicts, the next step would be to run a search on the Trademark Electronic Search System of the U.S. Patent and Trademark Office, which we call by its acronym TESS. You can find the TESS search database at uspto.gov. If you click on the search button on their homepage, it will bring up the TESS system. Then you can just enter your search terms in the field. In other words, you enter your proposed trademark and you search and see what comes up. That will show you if someone else has already registered your proposed trademark or if there are pending applications for your proposed trademark.

Trademark Electronic Search System

A TESS search generally is used for a preliminary screening to see if there are any exact matches. It’s not great for looking for phonetic equivalence, so it’s a good first step but it’s definitely not the way you will know whether your trademark is available. It will maybe show you that your trademark is not available if there’s an exact matching trademark already registered for similar goods or services.

So let’s assume you’ve done your Google search and your TESS search and they haven’t revealed any conflicts that would make you think your proposed mark isn’t a good idea. The next step for you would be to have a comprehensive trademark search conducted by an attorney. An attorney can get a very thorough search conducted and evaluate the search report and provide you with an opinion letter and a consultation so you can have a really good idea as to whether your desired trademark is available for you to safely use and to apply to register with the U.S. Patent and Trademark Office.

If the opinion is that the mark does appear available or that there may be some potential conflicts but it’s within your level of risk that you’re willing to accept, then you can proceed with a trademark application to register your mark with the U.S. Patent and Trademark Office. And in our next segment, we’ll talk about all the ins and outs of trademark applications. For now, your takeaway from this video should be that you need to clear your trademarks properly before you proceed with any new trademark, and that can involve first doing your own searching on Google and the U.S. Patent and Trademark Office’s TESS database. After which, if the trademark appears available, you should undertake a comprehensive trademark search with the guidance of an attorney, and then you proceed from there.

Anyway, thanks so much for watching and we’ll see you next time. Bye.

Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.