Businesses face an all-time high of trademark infringement risk because of a complicated and growing trademark landscape worldwide. Trademark searching and clearance is the process of identifying whether your proposed mark is in-use by another owner of a similar or the same mark (i.e., prior rights) and gathering information to assess the mark's registrability and protectability.
That said, an insufficient search can result in expensive legal consequences if litigation ensues. In this article, we help businesses understand five common mistakes to avoid for trademark searching and clearance.
Mistake 1. Inadequate Trademark Searches
Inadequate trademark searching can result in trademark infringement litigation. Many lawsuits could be avoided if a thorough trademark search and clearance had been conducted.
For example, hopeful trademark owners are not searching for perceived descriptive terms to determine whether it has acquired a secondary meaning. While trademark lawyers use several search methods, they generally perform preliminary and comprehensive searches to prevent this frequent error from happening.
Mistake 2. Underestimating Legal Protections of Canceled or Abandoned Applications
Business owners should also avoid miscalculating the legal protections of canceled registrations or abandoned applications. Many erroneously assume that stagnant trademarks are fair game for use. But the original trademark owner may still use or otherwise have legal rights to it. Suppose the trademark falls under a canceled or abandoned status, in that case, you will need to conduct additional trademark research to determine whether the owner still uses the canceled or abandoned mark in commerce.
Mistake 3. Forgetting About Unregistered Trademarks
The United States Patent and Trademark Office (USPTO) does not record every trademark. As a result, unregistered trademarks add to the challenges of trademark searching and clearance efforts. While obtaining a trademark registration is essential, other reasons, such as the risk management of infringement claims or limited use factors, may deter the original owner from obtaining a formal registration.
Mistake 4. Ignoring Opposing Trademark Owners
Conducting a trademark search may reveal that another person or company owns the trademark you want. Some companies determine that the benefit of using a diluted trademark for profit outweighs litigation costs. Even so, we caution you not to make this error since it is neither a legal nor ethical strategy.
In that case, the original trademark owners can file for an injunction against your company's use of their trademark. Further, they can pursue civil damages that result in even more significant financial losses.
Mistake 5. Not Consulting a Trademark Lawyer
Several legal pitfalls can occur at any point when searching and clearing a trademark. Avoid these mistakes by working with a trademark attorney experienced in protecting the intellectual property of brands. They have a deep bench of risk management strategies and resources to ensure that your trademark clearances are reliable and comprehensive.