The Important of Trademark Clearance
- The adoption of a “weak” mark will allow competitor's use of similar marks.
- Unduly delayed product introductions such as those caused by trademark application issues (refusals, oppositions, etc) can on occasions become critical and change the critical path for the entire project.
- The failure to consult trademark counsel prior to engaging in infringing conduct, where such consultation would be reasonable, supports a finding of willful infringement. E. & J. Gallo Winery v. Consorzio Del Gallo Nero, 20 U.S.P.Q.2d 1579 (N.D. Cal. 1991).
- Defendant had spent over $112 million dollars on advertising and $253 million dollars on consumer and trade promotion in six years in connection with its THIRST AID campaign for isotonic beverages. It was required to discontinue use of said mark and pay $15,749,824 in damages and interest plus attorney's fees to the owner of the senior user of the same mark for similar goods. See Sands, Taylor & Wood v. The Quaker Oats Co., 18 U.S.P.Q.2d 1457 (N.D. Ill 1990), rev'd in part, 978 F.2d 947, 24 U.S.P.Q.2d 1001 (7th Cir. 1992), remanded, 1995 WL 221871 (N.D. Ill. 1995).
→ Trademark Search and Clearance (Conflict Analysis)
Two situations for a trademark search & clearance are vital to business decision making.
(1) Before committing resources to production and marketing decisions, a business needs to have a presumption of ownership of a proposed mark and the right to use their trademarks; and
(2) Before committing resources to trademark registration fees and prosecutions costs, a business also needs to have a presumption of ownership and the right to use proposed trademarks, especially if the proposed trademark is going to be used for many classes of goods.
The proposed mark will be refused registration if it so resembles a previously registered federal mark as to be likely, when used with the applicant’s goods and/or services, to cause confusion or mistake, or to deceive. See ConflictingMarks.com for more information on “What is a Conflicting Mark?”
A mark can also be opposed during the publication time period before registration.
If a prior owner of a mark believes that a mark published for opposition (or listed
on the USPTO site) infringes their prior rights, the prior owner may use this 30-
A federal, state, and common law trademark search and clearance (conflict analysis)
can verify the right to use the proposed mark by verifying no prior owner has acquired
the right by use or registration in federal, state, or common law markets (registered
and unregistered). No search can uncover every used mark but doing a thorough search
can substantially decrease the risk of having an opposed trademark or an infringing
trademark. Common law rights for unregistered marks are geographic in nature and
belong to the first user of a non-
*A non-
The USPTO will not refuse a proposed trademark on the basis of the right to use the mark, only the right to register. The USPTO and the TTAB have no authority to determine the right to use, or the broader questions of infringement or unfair competition (TBMP §102.01), but only the right to register on the federal registers. However, the right to use a mark may be challenged by a prior user under the Lanham Act in federal court. The Lanham Act provides that a registered mark, even if it has become incontestable, still may be challenged "to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark." 15 U.S.C. 1065 as quoted in Advance Stores Co. Inc. v. Refinishing Spec. Inc., 188 F.3d at 411 (6th Cir., 1999).
This is a good time to search out other goods and service categories that may be added later to verify the right to use the mark on these and file an intent to use. Ownership of one registration, even if it is incontestable, does not give the applicant a right to register the same or similar mark for different goods or services, even if they are closely related to the goods or services set forth in the incontestable registration. Reserving the rights in advance with an Intent to Use application may be a good strategy.
Search Not Just Patents® sites:
Aim Higher SM
Not Just Patents®
©2008-
Call: 1-