Trademark Clearance Process

In assessing the availability of a trademark, we look for similar marks used in connection with the same or related goods or services.  Similarity of the marks is assessed by comparing the visual, aural and connotative similarity of the marks.  The relatedness of the goods or services is assessed on the basis of whether consumers would mistakenly believe that the goods or services at issue emanate from the same source.

U.S. Clearance

Preliminary Screening Search

Purpose: The preliminary screening search is a means to determine which marks of those under consideration are clearly not available for adoption and use due to marks that are the subject of federal registrations or applications and state registrations.

How: The preliminary screening search is conducted using an in-house database of federal applications and federal and state registrations.  The database is current to within four to six weeks.  A first page Google search is included always.

Time: A preliminary screening search can generally be conducted and reported out within a day.  Results are reported by e-mail.

Cost: Variable depending upon the number of marks searched and the nature of the marks and the goods or services of interest.  A search of several single word marks using the standard database will cost approximately $500.

From the marks that appear clear, you select the top one to three marks for submission to counsel for ordering a U.S. full search.

U.S. Full Search

Purpose: The U.S. full (or comprehensive) search includes the most current information available regarding federal applications and federal and state registrations, common law uses (unregistered trademarks and business names that can impact the availability of a mark), as well as domain name registrations and Internet references.  The search includes phonetic equivalents, foreign language equivalents, spelling variations and the like.  Each mark is the subject of a separate search.

How: Conducted by search professionals from one of a number of different vendors of trademark search services using public and proprietary databases.

Time: Vendor charge:
Three days (normal turnaround) $700
Next day $1,100
Same day $1,500

Upon receipt, counsel reviews the search and reports the results by phone or e-mail.  This process of review and reporting is charged on a straight time basis, but averages +/-$1,000 per search/mark, depending upon the length and complexity of the search being analyzed.  A copy of the search report is provided to you.  A letter more fully analyzing the report and discussing in greater detail the risk associated with the adoption and use of the mark under consideration is also available.

An additional search option with the full search is the Company Name Search, useful for businesses that are selecting a new name.  The company name search is beneficial for determining company name availability when forming, merging, qualifying, or naming corporations.  The search vendor compares the proposed name or mark with company names registered with the Secretary of State in all 50 states.  The company name search option adds approximately $500 to the vendor’s full search charge.

If the mark is going to be used outside the United States, an international search should be considered.

International Clearance

Clearing a mark internationally is a hit or miss proposition and can be very expensive. 

If the mark is going to be used globally, a Worldwide Identical Screening Search (WISS) is appropriate.  The WISS discloses marks identical to the one being searched that have been published for opposition in the various national trademark offices around the world.  The WISS provides a picture of the popularity of a particular mark and highlights where there may be potential problems.  The limitations of the WISS are that it is looking at identical marks only, not phonetic equivalents and spelling variations, it often does not disclose whether the marks achieved registration or the present status of the marks, it does not disclose applications that are pending, but not yet published, and it does not disclose the actual goods with which the mark is associated.  The vendor charge for a WISS is $1380 per mark searched, and turnaround time is one day.

If the proposed mark is only going to be used in a certain region, a Regional Identical Screening Search (RISS) may be appropriate ($520).  Individual country identical screening searches (KISS) are also available ($120). 

Additional information about the goods or services associated with particular marks disclosed by an identical screening search can be obtained for a nominal fee, enhancing the usefulness of the search.

Our time for reviewing and reporting the results of an identical screening search is charged on a straight time basis and varies depending upon the length and complexity of the report.

If an identical screening search discloses mark(s) that appear problematic, there are a number of more comprehensive searches that are available, including searches of individual national registers, or comprehensive regional searches.  The vendor charge for a comprehensive national search varies from country to country, but generally is within the range of $500 to $1200 per country/per mark/per class.  Turnaround times for comprehensive national availability searches vary between five to twenty days.  Regional and key country screening and full search packages are available as well.

Linguistic Search

Many businesses are requesting cultural linguistic searches or language connotation searches as part of the clearance process in order to ensure that the proposed mark(s) are not problematic in other languages.  A trained local linguist in each country corresponding to the language of interest provides a summary of findings, including: the appropriateness of a name/mark; potential meanings and associations; and problems with pronunciation.  Charges vary by language and vendor.  Turnaround time is normally seven to ten days.