Boutique Trademark Prosecution & IP Litigation Law Firm

Trademark Search and Clearance

Trademark Search and Clearance

WHAT IS A TRADEMARK CLEARANCE SEARCH?

A trademark clearance search is a structured search used to assess whether someone else is already using the same or a similar trademark to the one that you want to use with related goods or services.

WHY SHOULD I CONDUCT A TRADEMARK CLEARANCE SEARCH?

Conducting a thorough trademark clearance search can help you avoid potential legal issues before they arise. Consumers rely on trademarks to quickly identify the source of the goods or services they purchase. A trademark must be unique to you and distinguishable from the other trademarks that are being used with the same or similar goods or services.

ARE THERE ANY CONSEQUENCES IF A TRADEMARK CLEARANCE SEARCH IS NOT COMPLETED?

Overlooking an existing trademark can be a costly mistake. Your trademark may be refused registration or opposed if it is confusing with someone else’s trademark. Using someone else’s trademark without permission may also result in legal action taken against you for trademark infringement.

WHEN SHOULD A TRADEMARK CLEARANCE SEARCH BE CONDUCTED?

A search should be done before adopting a mark for your business and investing money in it. Far better to identify any risks at the outset than receiving a demand letter a year later requiring you to rebrand.

HOW MUCH DOES A TRADEMARK CLEARANCE SEARCH COST?

Shift Law Professional Corporation can conduct a search and provide trademark clearance advice for any budget starting at $500. A higher budget will allow you to have more confidence that you have screened for a greater number of trademarks and potential issues.

WHAT DOES CIPO AND USPTO MEAN?

The Canadian Intellectual Property Office (CIPO) and the United States Patent and Trademark Office (USPTO) are the federal agencies responsible for granting trademark registrations in Canada and the United States, respectively. If you are planning to register or use a trademark in both countries, you will need to conduct separate clearance searches for each jurisdiction.

HOW DO YOU CONDUCT A TRADEMARK CLEARANCE SEARCH?

A trademark clearance search is conducted to find the same or similar trademarks being used with related goods or services. The first place to search is the federal trademark database in the jurisdiction in which you plan to register your trademark. In Canada, this is the Canadian Trademarks Database administered by CIPO. In the United States, a search of federal registrations and pending applications is conducted by searching the USPTO’s Trademark Electronic Search System (TESS).

Start by searching your trademark exactly. You’ll also want to search for phonetic equivalents, alternative spellings, misspellings, foreign equivalents, homonyms, and synonyms for your trademark. In Canada, it’s also recommended that you search for translations of the mark in English and French. The Canadian Trademarks Database includes a feature to search for equivalent terms in both official languages to help broaden your search. It’s also important to search for your trademark and variations of it with related goods and services. For example, if you plan to sell baseball gloves, you’ll also include searches for related goods such as baseballs and bats.

Design marks or logos are searched slightly differently. If your trademark incorporates a design element, you will also need to search the design codes for each individual visual element that appears in your trademark.

WHAT ARE COMMON LAW SEARCHES?

A search for unregistered (common law) trademarks is sometimes referred to as a common law search. Trademark rights are acquired through use. This makes it possible for someone who is using a similar trademark but hasn’t applied to register it to still oppose your registration on the grounds that it would be confusing with their trademark.

There are multiple resources that you can search for unregistered trademarks. The best place to start is an internet search. Newspapers, trade magazines, social media, ecommerce platforms, the Yellow Pages, registrations of corporate business names and domain name registration databases can also help you identify if another business is using a trademark that is similar to yours. If you plan to register a trademark in the US, it is recommended to also search state trademark registration databases.

HOW LONG DOES A TRADEMARK CLEARANCE SEARCH TAKE?

A trademark clearance search can generally be completed within a week. Including unregistered trademarks to your search, searching multiple jurisdictions, and the number of goods and services you wish to register can all add time to your search.

WHAT DO I DO WITH MY SEARCH RESULTS?

Your search results will help you identify if there are other trademarks which could potentially block your registration. If you find your identical trademark is being used with the same types of goods or services that you want to sell, it may be easiest to select a different trademark. If you’re uncertain about whether the trademarks you’ve identified would pose a problem, you may wish to speak to a trademark lawyer who can help you interpret the results and advise you of any potential obstacles to registration.

DO I NEED A LAWYER TO REGISTER A TRADEMARK?

You can prepare your own trademark application, however, preparing a trademark application can be a complex process. A trademark lawyer will know how to best advise you on the registrability of your trademark, prepare the application, and respond to various issues that may arise during the trademark application process, saving you time and money in the long run. For US registrations, if your principal residence or place of business is not in the US, you will require a US-licensed attorney to represent you. Our firm is licensed in both Canada and the US and can assist you with the complete trademark registration process in one or both countries.

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