As we have mentioned since Part I of this series, we aimed to achieve two objectives through this guide: (1) how to evaluate the registrability and strength of a proposed mark, and (2) to enlighten you about factors that need to be considered and the process of assessing the outcomes of a trademark clearance search. So far, we have exhausted the first objective after discussing eligibility for federal registration as the last piece of relevant information concerning a proposed mark.
To conclude this miniseries, we have hammered on how to analyze the outcomes of a trademark clearance search, which is part and parcel of enlightening you about factors that need to be considered and the process of assessing the outcomes of a trademark clearance search.
How to Analyze the Outcomes of a Trademark Clearance Search
Having collected all the relevant information discussed in the past five blogs under this miniseries, the next step is to conduct, commission, and analyze the outcomes of your search. However, this step depends on whether or not the mark in question is registrable. Ideally, the primary goal of a clearance search entails uncovering existing trademarks (registered or common law marks) that the proposed mark may be dilutive of or confusingly similar to. As discussed earlier, the registrability of a proposed mark or a litigation risk may be blocked by the existence of such marks.
Back to our discussion, the analysis of the outcomes of a clearance search should entail a consideration of the likelihood and the extent of possible dilution or confusion between the preexisting mark(s) and the proposed mark. Please, we invite you to read more about dilution in our blog post “The Dilution Law and its Role in Trademark Enforcement” and the likelihood of confusion in another post, “Initial Interest Confusion And Its Role In Trademark Enforcement,” respectively. Following the possibility of a dilution or confusion, the client should be advised against adopting the mark in question or even altering the products or goods associated with it to avoid dilution or confusion.
The relevant factors to consider for the likelihood of confusion, which the USPTO applies in its assessment of the registrability of a mark, include:
- The extent of potential confusion (i.e., whether de minimis or substantial)
- The extent to which an applicant has the right to exclude others from use of its mark
- Market interface between the owner of a prior mark and the applicant
- Variety of goods on which a mark is used (for example, if it is a family mark or house mark)
- Conditions and length of time under which there has been concurrent use without actual confusion evidence
- Extent and nature of any actual confusion
- Third-party use of similar marks on similar products or goods
- The fame of the prior mark
- Buyers to whom and conditions under which sales are made (i.e., sophisticated purchasing and/or impulse versus careful)
- The similarity of trade channels
- Relatedness of the products/goods
- The similarity of the marks in their entireties as to commercial impression, connotation, sound, and appearance.
- On the other hand, the factors to consider when it comes to an analysis of dilution include:
- The likelihood of dilution by tarnishment (for example, whether the famous mark portrayed by the client’s proposed mark in an unsavory or unwholesome context)
- The likelihood of dilution by blurring – some of the relevant factors include:
- Whether the client intends to create an association with the famous mark
- Degree of recognition of the famous mark
- The extent to which the owner engaged in the substantially exclusive use of the famous mark
- Degree of acquired or inherent distinctiveness of the famous mark
- Degree of similarity between the marks
- Date of first use, if applicable-and-
- The fame of the prior mark (although it is hard to meet fame as a standard in particular).
With that, we have concluded this short miniseries on “Trademark Clearance Search Checklist.” While you enjoy other series to come, stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.