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Trademark Clearance

Service

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People

With increasing intellectual property litigation, it is not only wise, but necessary to clear newly selected trademarks before goods or services are offered under the brand. Understandably, businesses that own trademarks and brand names go to great lengths to protect their rights to those brands and trademarks. Without appropriate trademark searches, there is a high risk that the use of a trademark will infringe upon the preexisting rights of others. The clearance process, in most cases, involves a minimum of two steps: preliminary and full search.

Preliminary Search

With a preliminary search, the records of the United States Patent and Trademark Office and the state trademark registers are reviewed to determine whether the exact mark has been registered or is the subject of an application for registration. For several reasons, the preliminary search cannot be relied upon to clear a trademark. A preliminary search does not search for marks having similar spellings, meanings, or appearance. The preliminary search also does not uncover unregistered uses of the trademark. However, the preliminary search is valuable because it may be used to rule out the use of a trademark prior to the full search, which avoids the full search cost.

Full Search

The full trademark search is a comprehensive search of all pending and registered trademark applications in the United States Patent and Trademark Office, state trademark registrations, and many common law databases such as telephone directories, product directories, company directories, and others. The full search uncovers marks having similar meanings, spellings, and appearance as well as other variations of the mark. While the full search is an excellent tool to be used in clearing a trademark, it is not error free in all cases. The databases searched may be incomplete or, due to searcher error, marks may be missed in the search. However, we have found that a full search is a reasonable tool in making judgments as to whether one can use a particular trademark in the marketplace.

Trademark Application

The trademark application process involves accurately classifying and describing the goods or services to be offered under the mark. This information, together with applicant identifying information, is placed in the application to be filed. It usually takes only a few days to prepare and file an application. The United States Patent and Trademark Office charges per class of goods or services as its filing fee. Depending on the goods and services to be offered under the mark, the applicant may have to pay multiples of the filing fee.

Once the application has been filed, an examiner at the United States Patent and Trademark Office will, in most cases, issue an Office Action with comments on the application. If the applicant decides to proceed with the application after receiving the Office Action, a response must be prepared and filed. Assuming the Trademark Examiner accepts the facts and arguments contained in the response to the Office Action, the trademark application will be published for opposition and ultimately be registered, unless a third party files an opposition to the application based on its preexisting rights.

About the Intellectual Property Practice Group

The law firm of Harris Beach PLLC regularly provides clients with a full range of intellectual property services, including those mentioned above as well as patents, non-compete agreements, copyrights, and associated litigation.

Leader(s)

James Muldoon

James R. Muldoon

Member
(315) 214-2021
jmuldoon@harrisbeach.com

Team

Robert Brown

Robert C. Brown

Patent Agent
(585) 419-8800
James Muldoon

James R. Muldoon

Member
(315) 214-2021
jmuldoon@harrisbeach.com
James Nonkes

James P. Nonkes

Member
(585) 419-8611
jnonkes@harrisbeach.com
Steve Nonkes

Steven P. Nonkes

Member
(585) 419-8847
snonkes@harrisbeach.com
Brendan Palfreyman

Brendan M. Palfreyman

Member
(315) 214-2161
bpalfreyman@HarrisBeach.com
Neal Slifkin

Neal L. Slifkin

Member
(585) 419-8636
nslifkin@harrisbeach.com
Laura Smalley

Laura W. Smalley

Member
(585) 419-8736
lsmalley@harrisbeach.com
All Insights |
 February 10, 2022
Intellectual Property Law: Year in Review 2021
Analyzing the major Federal Circuit decisions that have affected patent law over the past year can spark a change in your procedures or deci...read more
All Publications, Legal Alert |
 December 15, 2021
New Procedures for Challenging Trademark Registrations at the U.S. Patent and Trademark Office
On December 18, two new procedures will be available for challenging U.S. trademark registrations....read more
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Trademark Clearance

Service

With increasing intellectual property litigation, it is not only wise, but necessary to clear newly selected trademarks before goods or services are offered under the brand. Understandably, businesses that own trademarks and brand names go to great lengths to protect their rights to those brands and trademarks. Without appropriate trademark searches, there is a high risk that the use of a trademark will infringe upon the preexisting rights of others. The clearance process, in most cases, involves a minimum of two steps: preliminary and full search.

■ All Services

Preliminary Search

With a preliminary search, the records of the United States Patent and Trademark Office and the state trademark registers are reviewed to determine whether the exact mark has been registered or is the subject of an application for registration. For several reasons, the preliminary search cannot be relied upon to clear a trademark. A preliminary search does not search for marks having similar spellings, meanings, or appearance. The preliminary search also does not uncover unregistered uses of the trademark. However, the preliminary search is valuable because it may be used to rule out the use of a trademark prior to the full search, which avoids the full search cost.

Full Search

The full trademark search is a comprehensive search of all pending and registered trademark applications in the United States Patent and Trademark Office, state trademark registrations, and many common law databases such as telephone directories, product directories, company directories, and others. The full search uncovers marks having similar meanings, spellings, and appearance as well as other variations of the mark. While the full search is an excellent tool to be used in clearing a trademark, it is not error free in all cases. The databases searched may be incomplete or, due to searcher error, marks may be missed in the search. However, we have found that a full search is a reasonable tool in making judgments as to whether one can use a particular trademark in the marketplace.

Trademark Application

The trademark application process involves accurately classifying and describing the goods or services to be offered under the mark. This information, together with applicant identifying information, is placed in the application to be filed. It usually takes only a few days to prepare and file an application. The United States Patent and Trademark Office charges per class of goods or services as its filing fee. Depending on the goods and services to be offered under the mark, the applicant may have to pay multiples of the filing fee.

Once the application has been filed, an examiner at the United States Patent and Trademark Office will, in most cases, issue an Office Action with comments on the application. If the applicant decides to proceed with the application after receiving the Office Action, a response must be prepared and filed. Assuming the Trademark Examiner accepts the facts and arguments contained in the response to the Office Action, the trademark application will be published for opposition and ultimately be registered, unless a third party files an opposition to the application based on its preexisting rights.

About the Intellectual Property Practice Group

The law firm of Harris Beach PLLC regularly provides clients with a full range of intellectual property services, including those mentioned above as well as patents, non-compete agreements, copyrights, and associated litigation.

■ People

Robert C. Brown

Patent Agent
(585) 419-8800

James R. Muldoon

Member
(315) 214-2021
jmuldoon@harrisbeach.com

James P. Nonkes

Member
(585) 419-8611
jnonkes@harrisbeach.com

Steven P. Nonkes

Member
(585) 419-8847
snonkes@harrisbeach.com

Brendan M. Palfreyman

Member
(315) 214-2161
bpalfreyman@HarrisBeach.com

Neal L. Slifkin

Member
(585) 419-8636
nslifkin@harrisbeach.com

Laura W. Smalley

Member
(585) 419-8736
lsmalley@harrisbeach.com

Harris Beach and its subsidiaries provide a full range of legal and professional services for clients across New York state, as well as nationally and internationally. Harris Beach is among the country’s top law firms as ranked by The National Law Journal and is among the BTI Elite law firms based on in-depth interviews of more than 600 corporate counsel at the world’s largest and most influential companies. Our clients include Fortune 100 corporations, privately-held companies, emerging businesses, public sector entities, not-for-profit organizations and individuals. Principal industries we represent include education, energy, financial, food and beverage, health care, insurance, manufacturing, medical and life sciences, real estate developers, and state and local governments and authorities.

Industry Teams
Automotive and Vehicle Dealerships
Blockchain and Digital Assets 
Cannabis
Construction and Surety
Educational Institutions Higher Ed
Educational Institutions K-12
EMS and Fire Protection Providers
Energy
Financial Institutions and Capital Markets
Food and Beverage
Health Care
Industrial and Consumer Manufacturing
Medical and Life Sciences
Municipalities and Local Agencies
Nanotechnology
Photonics
Racing and Gaming
Real Estate Developers
Science and Technology
Telecommunications and Media
Unmanned Aircraft Systems
USA Collegiate Sports
Veterinary Medicine

Practices
Alternative Dispute Resolution
Appellate
Business and Commercial Litigation
Collection Law
Commercial Real Estate
Corporate
Cybersecurity Protection and Response
Diversity Compliance
E-Discovery (e-infoSM)
Employee Benefits
Employment Litigation
Environmental Law
Environmental, Social and Governance (ESG)
Financial Restructuring, Bankruptcy and Creditors’ Rights
Government Compliance and Investigations
Health Law
Immigration Law
Insurance Coverage
Intellectual Property Law
International Trade Law
Internet Law
Labor and Employment Law
Mass Torts and Industry-Wide Litigation
New Markets Tax Credit
Patent, Trademark and Copyright Law
Product Liability and Comprehensive General Liability
Public Finance and Economic Development
Real Property Valuation Litigation
Residential Real Estate
Tax Law
White Collar Crime
Wills, Trusts and Estates

Consulting Services
HB Solutions LLC
Collegiate Sports Compliance
Data Privacy and Cybersecurity
Economic Development and Public Affairs
Educational Institution Assistance
EMRG® (E-Discovery Management Resources Group)
Energy
Health and Human Services
Human Resources
Information Technology
Marketing and Communication Services
Municipal and Local Agency Assistance

HB Cornerstone LLC
Owner Representation
Design Services
Facilities Consulting
Move Management

Caetra.io
CyMetric (Cybersecurity Regulation Compliance Software)

Offices throughout New York:

Albany
677 Broadway
Albany, NY 12207
518-427-9700

Buffalo
726 Exchange Street
Buffalo, NY 14210
716-200-5050

Ithaca
119 East Seneca Street
Ithaca, NY 14850
607-273-6444

Long Island
333 Earle Ovington Boulevard
Uniondale, NY 11553
516-880-8484

New York City
100 Wall Street
New York, NY 10005
212-687-0100

Rochester
99 Garnsey Road
Pittsford, NY 14534
585-419-8800

Saratoga Springs
513 Broadway
Saratoga Springs, NY 12866
518-587-0551

Syracuse
333 West Washington Street
Syracuse, NY 13202
315-423-7100

White Plains
445 Hamilton Avenue
White Plains, NY 10601
914-683-1200

Offices also in:

New Haven, CT
195 Church Street
New Haven, CT 06510
203-784-3159

Newark, NJ
One Gateway Center
Newark, NJ 07102
973-848-1244

Washington, DC
800-685-1429

Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2022 Harris Beach PLLC

Content current as of March 23, 2023 8:21 pm
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