Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (IP) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters, and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing, and development.

Still, here at Miletti Law®, we feel obligated to enlighten, educate, and create awareness about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, to achieve this goal, we have committed ourselves to create authoritative, trustworthy, & distinctive content. Usually, this content is featured as videos posted on our YouTube Channel https://www.youtube.com/channel/UCtvUryqkkMAJLwrLu2BBt6w and blogs that are published on our website WWW.MILETTILAW.COM. With that, the ball is in your court and you have an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and feel the positive impact of the knowledge bombs that we drop here!

As the authoritative force in Employment Law, it only seemed right to introduce one of the many upcoming series where we remain persistent in introducing a variety of topics, which will look to not only educate but also deliver in a sense that only Miletti Law® can. In this regard, this blog is Part I of a very short series on “Trademark Clearance Search Checklist,” in which we explore another core area of trademarks. Objectively, this checklist acts as a hands-on guide that can be used to determine the suitability and availability of a client’s proposed service mark or trademark for federal registration and/or use in commerce. In that regard, this guide has two objectives; (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. For the purposes of this discussion, we have started with the first objective.

How to Evaluate the Registrability & Strength of Proposed Trademark Service Mark

For starters, while it is a legal requirement under the Lanham Act (as codified under 15 U.S.C. § 1052), a trademark clearance search is conducted with the intention of evaluating and determining whether a proposed mark (intended for use) is confusingly similar or identical to other marks that may be already registered, awaiting registration, or unregistered. A trademark clearance search starts with the collection of all relevant information concerning the proposed mark, which includes (1) mark identification, (2) meaning of the mark, (3) actual or proposed use of the mark, (4) date of first use, (5) considerations for the marketplace, (6) relative strength of the mark, and (7) eligibility for federal registration. We shall cover the first three pieces of information in this blog.

1. Mark Identification

As it pertains mark identification, the exact pronunciation and spelling of the proposed mark should be confirmed as the first step. Further, it is important to determine whether the proposed mark is a trade dress (includes product configuration/design and/or packaging), collective mark, certification mark, service mark, or trademark. This step closely aligns with determining whether the proposed mark will be used with a specific design and/or other visual elements such as a given color or in a distinctive interface. Additionally, a specimen of the mark may be obtained, particularly if it will have a specific visual appearance.

2. Meaning of the Mark

After mark identification, the next piece of information to be collected concerns the meaning of the mark. For instance, one may evaluate whether the proposed mark has any geographic significance, which would help a customer to know the place of origin of the particular product. Additionally, it would be crucial to assess whether the proposed mark has a special meaning as well. For example, a proposed mark may refer to a character or person or literary or historical figure, have a meaning in a foreign language, and/or include industry jargon or technical term. Lastly, one may also need to determine the manner of the proposed mark’s selection and what significance its designer intended it to have in connection to the specific product. For example, a proposed mark may involve a double entendre or a play on words and/or be associated with a given attribute or feature resembling the product in question.

3. Actual or Intended Use of the Mark

As it pertains to this information, it is critical to determine how the mark will or is used in the marketplace. This means that the exact product, services, or goods that will be used with the proposed step should be articulately determined. A step further into this determination should include enquiring about any possibility of expansion, based on the currently known extent, regarding the use of the mark in the future. Potential uses may include but are not limited to (1) domain name, (2) name of a color, variety, style, or line within an existing brand, (3) corporate title or name, (4) slogan or tagline, (5) an entity or facility linked with the origin of a product, and (6) a product, service, or good’s brand name.

In the next blog and Part II of this miniseries, we shall move the discussion forward and hammer on “Date of First Use” and “Considerations for the Marketplace,” which include additional information that should be collected as part of a trademark clearance search.

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.