What is a trademark clearance search and why is it needed?

A trademark clearance search is the process of screening a proposed trademark (e.g., word, logo, phrase, etc.) to determine if the mark is available for use and/or registration (such as at the federal level at the U.S. Trademark Office).

Performing a trademark clearance search is a vital step in any branding or re-branding process – large or small – to provide a level of confidence on the success of the trademark application. It includes searching federal and state trademark databases, foreign and international databases, common law use, Internet use, social media use, domain name use, and the like. Results are evaluated by intellectual property attorneys for risk factors according to a client’s intended use.

Most importantly, performing a trademark clearance search helps to

1. evaluate the likelihood of registration of a proposed mark at the applicable trademark office
2. mitigate risks of trademark infringement against another party’s trademarks and trademark rights associated thereto

When to conduct a clearance search

A clearance search and analysis should be conducted prior to using the proposed trademark, and preferably before marketing material and public-facing material is prepared or released.

The goal is to avoid wasting time and energy on a proposed trademark that is ultimately not free to use or register based on the search results; the earlier a proposed mark can be cleared or eliminated from consideration, the better.

At Tucker Ellis, we suggest including your legal counsel in these discussions as early as possible to ensure an efficient trademark selection process as well as providing multiple proposed trademarks for searching.

Considerations for global use

Due to varying foreign trademark laws, the clearance process can become more complex when considering a trademark that may be used in more than one country. Nevertheless, the process of clearing and vetting a mark is critical in any foreign country or jurisdiction.

Some countries operate using a first-to-use system (such as the U.S.), and some countries operate under a first-to-file system (such as China, Europe, and the UK). Therefore, understanding the clearance process of the countries in which the proposed trademark is intended to be used is key. It is also beneficial to consider whether use of the proposed trademark may expand over time to other countries or whether the trademark should be translated and filed in multiple languages.

For more information on what a Trademark is, please see our September 2021 IP Tip of the Month.

For additional insight on Brand Strategy Considerations, please see our March 2024 IP Tip of the Month.

Have questions? Or need assistance with a trademark clearance search for a new brand, company name, or product? Tucker Ellis is happy to help!