Before Obtaining A Trademark, Are Clearance Searches Necessary?

 

According to the boutique law firm of Allen, Dyer, Doppelt + Gilchrist, one of Florida’s leading trademark law firms, before adopting a mark, it is generally advisable to research the availability of the mark to attempt to avoid infringement and make sure the mark is available for registration.  In determining whether trademarks are available, we research marks on the federal and state trademark databases, as well as users that might not have an application or registration for their marks.  This is because, in the United States, trademark rights can be obtained through use even without an application or registration.

 

According to Attorney Allison Imber: “The searches are designed to determine whether a subject mark is likely to be confused with another, which is the standard for trademark infringement.  The inquiry involves a comparison of the marks for similar words and syllables, as well as similarities in sound, look, commercial impression and meaning.  In the eyes of trademark law, minor permutations in the spelling of the mark and differences in word order are generally not considered significant because consumers are presumed to retain a general as opposed to a specific recollection of trademarks.  For instance, the words “KOOL” and “COOL” will likely be considered equivalent.”

 

Attorney Imber also explains that her firm also examines whether the marks are used on goods or services that are similar or related and whether those goods or services are marketed to the same kinds of customers through the same or similar channels of trade.  Where similar marks are used for identical or related goods or services, or where consumers might think that the goods or services emanate from the same source, there may be a likelihood of consumer confusion and accordingly, trademark infringement.