Trademark Clearance

Here’s a typical scenario for small business owners: Al, a new business owner chooses a mark for his new product without first clearing his mark. He spends hundreds, if not thousands, of dollars on advertising for his new product and begins to use his new mark in commerce. A month later, Bob, who owns a mark that he has used in commerce for many years, sends a cease and desist letter to the Al and demands that Al stop using his mark in commerce. Al has now lost thousands of dollars in advertising costs, packaging costs, and other costs associated with using the mark in commerce.

Business owners who want to use a mark in commerce should clear their mark first. What does it mean to “clear your mark”? Briefly, clearing your mark means searching through all of the registered marks and common law uses of a mark to ensure that no one else is using the same or similar mark in connection with the same or similar goods or services. Trademark attorneys use commercial services to search through databases filled with large datasets to find prior uses.

As previously noted on this blog, trademark rights in the United States are based on use: the first person to use a mark in commerce has priority rights to that mark. Therefore, if someone else is already using a mark similar to the mark you have chosen, then they have may have prior rights to use the mark. If so, you may have to stop using your mark in commerce. This may also prevent you from registering your trademark if a prior user opposes your mark during the application process or if the examiner believes that the marks are so similar such that the public is likely to confuse the source of the goods or services associated with the marks.