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. As we have mentioned since Part I of this series, we aimed to achieve two objectives through this guide, including (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 series, we have hammered on how to analyze the outcomes of a trademark clearance search, which is part of 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 accessible at https://milettilaw.com/blog/f/dilution-%E2%80%93-the-first-key-aspect-of-trademark-enforcement and the likelihood of confusion in another blog accessible at https://milettilaw.com/blog/f/initial-interest-confusion-%E2%80%93-key-aspect-of-trademark-enforcement. Following the possibility of a dilution or confusion, the client should be advised against adopting the mark in question or even alter 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 a 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:
  1. 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)
  2. The likelihood of dilution by blurring – some of the relevant factors include:
  3. Whether the client intends to create an association with the famous mark
  4. Degree of recognition of the famous mark
  5. The extent to which the owner engaged in the substantially exclusive use of the famous mark
  6. Degree of acquired or inherent distinctiveness of the famous mark
  7. 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.