On October 22, 2018, Stacey Kalamaras presented a CLE on How to Structure a Trademark Clearance Opinion Letter and Assess Risk. In this guest blog post, Stacey discusses the importance of searching a trademark before putting it into use.
Why do we Search?
Many clients believe conducting trademark clearance searches is an unnecessary expense. However, we believe it is one of the least expensive preventative measures a business can take. The primary reason we undertake clearance searches is to ensure the proposed trademark is available for use and registration. We conduct full availability searches to be sure the client’s mark is not likely to infringe any prior third-party trademarks. However, we learn a great deal more from a full availability search. The search provides us with valuable insight into the competitive landscape in the event the USPTO issues any refusals of registration. It can be a great asset and source of knowledge in the event the trademark owner receives a cease and desist letter. By conducting a full availability search in advance, a trained trademark attorney can review the search results and advise on all of these issues as well as whether as opine on the mark’s distinctiveness, or conclude if the mark will enjoy a more narrow scope of protection. In short, conducting a full search at the outset, can help save the client money in the long run.
There is no “Duty to Search”
When awarding damages, courts are split on whether a failure to search constitutes bad faith for purposes of awarding damages. Trademark counsel should always recommend a full search, but the choice to undertake a full availability search is always the client’s. Any competent U.S. trademark attorney will generally recommend a search as a first step for the reasons outlined above. As trademark counsel, our job is to help the client assess risk and not to tell the client which mark you can and cannot use. Worst case scenario, a client may have to change a company and/or brand name years later and most business owners realize such a disruption, expense and confusion to its customers is not worth the relatively nominal expense of conducting a search at the outset.
Limitations of Searches
As you plan for the search, talk to your client. Be sure you understand who owns the mark, how the mark will be used, whether the mark has a meaning in a foreign language and all of the contemplated goods and services with which the mark will be used so that you can properly assess the search and the risk. Please keep in mind that no search – whether knockout of full search – is foolproof. Even the full availability searches conducted by the leading vendors are conducted by humans who specialize in doing this type of work on a regular basis, which leads to some level of subjectivity. Moreover, there is lag in the USPTO database and reporting. Also bear in mind, that the search is limited to the mark and goods and/or services searched. However, it is the best indicator we have to assess risk and provide trademark owners with peace of mind.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. Stacey has managed large, global trademark portfolios in diverse industries around the world. What makes Stacey truly unique is that prior to becoming an attorney, she worked for more than a decade as a marketing and advertising executive in the consumer-packaged goods industry. This unusual combination of business and legal experience allows her to quickly establish herself as a trusted business adviser with her clients. Stacey has significant experience with global trademark clearance, registration and enforcement and development anti-counterfeiting strategies for her clients on a global basis. She is a frequent speaker on IP, trademark and anti-counterfeiting strategies.