Why Trademark Availability Assessments Make Sense

Before I answer that question, let’s talk about what a trademark availability assessment is.  Sometimes known as a trademark clearance, a trademark availability assessment allows a trademark attorney, more often than not, to go out and determine whether or not the mark you intend to use or propose to use in connection with your goods or services, is, in fact, available and will not subject you to claims of trademark infringement or other trademark law related claims.  The purpose of trademark availability assessment is really threefold.

First, it’s meant to identify both existing United States Patent and Trademark Office applications and registrations that an examining attorney would consider and rely upon to refuse your application due to a likelihood of confusion with those existing applications and registrations.  The purpose behind that is you want to know what the examining attorney is going to say about your particular trademark application before you go and spend the money on a filing fee and, possibly, an attorney fee to get your trademark registered.

Second, a trademark availability assessment is meant to identify not only the trademarks that exist within the USPTO, but also what’s known as common law trademarks or trademarks that have been used but not necessarily applied for the additional protections and benefits that go along with a trademark registration.  There are several ways to identify common law trademarks.  Using a search engine such as Google, Yahoo or Bing will allow you to search for your exact mark, as well as variations of it.  That will show what else exits out there that may be problematic.  While this sounds relatively simple, and something that a non-attorney can do, the fact of the matter is that whether or not a particular mark would equate to trademark infringement is a determination that should be made by a trademark attorney.  It is an intensive and multifaceted analysis that requires not only experience, but also a versed understanding of the law and past decisions in similar situations.

So, again, the first purpose of an availability assessment is to look at what is existing at the USPTO, and then, second, also, what else is out there that could lead to you having issues in the event that you pursue a trademark application or use.  In particular, you may jeopardize your ability to claim exclusive rights to your mark if someone else had already been using that particular mark, even if they did not pursue a trademark registration.

Finally, the other purpose of a trademark availability assessment  or trademark clearance is to give a prediction as to the strength of your particular mark and provide you with a recommendation as to whether or not to proceed with either its application for registration or use, and that’s important for several reasons.  One, you do not want to select a mark that could subject you to a claim of trademark infringement.  Often, I receive calls from prospective clients telling me that they’ve selected a mark, they’ve branded all their goods or branded their website or branded all their materials in connection with their services, and then they want to learn whether or not they’re free to use the mark.  Unfortunately, more often than not, there are risks that are out there that could subject them to claims of trademark infringement and all of the monetary damages and penalties that go along with it.  So it’s better to have a trademark clearance done before you go down the line of selecting a brand and using it on all your goods or services.

The other thing that’s important to show is whether or not the mark that you are intending to use can even be protected as a trademark.  There are levels of trademark protection and a continuum in which a particular mark would fall.  For example, if you use a generic mark, you are entitled to zero trademark protection.  If your mark’s descriptive of the goods of services, you may have limited trademark protection.  However, if you use a suggestive, fanciful or arbitrary trademark – and those are legal terms of art with specific meanings attached to them – you would be entitled to the strongest kinds of trademark protection.  So, understanding what the strength of your proposed mark is at the outset is critically important.  You wouldn’t want to invest time, money and effort into what you believe to be a protectable trademark only to find out that a trademark attorney with experience in the area says the exact opposite.  Similarly, you wouldn’t want to try and enforce your trademark rights against a third party only to have their attorney offer the defenses that a trademark availability assessment would have provided and educated you on at the outset.

So, there are multiple reasons that you should pursue a trademark clearance.  And if you’ve already started using a mark, it doesn’t mean that you should not worry about having a trademark clearance done.  It’s better to determine, a little bit later, rather than never, what risks and liabilities you have in connection with your current and existing use of a particular trademark or service mark.

So, ultimately, as a trademark attorney, I say it’s critically important and makes absolute sense to have a trademark availability assessment conducted by a registered attorney who has experience in the trademark realm.  Without doing so, you risk several things.  You risk a refused trademark application with the USPTO, and even more importantly, you risk a trademark infringement lawsuit or other trademark related issue in the event you start using your particular mark without knowing what the legal ramifications are in light of other existing uses of marks that are the same or similar in connection with the goods or services out there.

So, take the time, spend the initial relatively minor and worthwhile investment to make sure your trademark is, indeed, available and clear before you move forward with it in connection with your business.

I hope this has been helpful, and I hope that I’ve answered your question of why a trademark availability assessment makes sense.

You’ve been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.