How to keep your small business out of trouble with trademark clearance research

by on January 18, 2012

This is a guest post by Jeffrey Fabian of  TrademarkIntel™

Trademark research for small businessesWhen choosing a brand name for your new small business or product line, it’s easy to fall in love with a name and feel the impulse to start stamping it immediately on anything and everything you can get your hands on. While this is decidedly the fun part of branding, it can also get you into a lot of trouble and create headaches down the road if you don’t take the necessary steps to make sure that your chosen trademark isn’t already in use by somebody else.

Long story short, trademark infringement is serious business, and it occurs whenever a business adopts a trademark that is “confusingly similar” to another trademark already on the market. Ignorance is not a defense, and the trademark owner who lets an infringer slide is a rare bird indeed. Moreover, the “confusingly similar” analysis looks not only at identical trademarks, but also those that are in any way similar in “sight, sound or meaning.”

As a result, all small business owners should perform trademark “clearance” research before adopting a new brand name.

Trademark clearance research serves 2 vital functions:

•    It lets you know if anyone else is already using a similar trademark—and might sue you for trademark infringement.
•    It lets you know whether or not you will have the ability to assert exclusive control over your brand name in the marketplace.

Both of these concerns can give rise to significant legal, settlement and re-branding expenses down the road if they aren’t addressed proactively through trademark clearance research. Nothing is worse than pouring money into a branding campaign only to find out that a competitor has the right to require you to change your name. Yikes!

Performing thorough trademark clearance research can also turn you on to any negative connotations or associations affiliated with the proposed trademark of which you may not previously have been aware. Has a convicted fraud artist previously done business under your proposed trademark? Does your trademark have a negative or immoral connotation in the modern lexicon? While not directly related to legal rights in trademarks, these too are important issues that need to be considered when evaluating a proposed trademark.

Thorough trademark clearance research involves:

•    Searching multiple related terms
•    Searching for active registrations and both pending and denied applications, and reviewing the histories of relevant files to see what happened to each of them along the way
•    Searching local trademark and business entity databases to see if anyone else is using a similar name
•    Searching other online databases, listings and resources to see if anyone else is using a similar name, and to see if there are any other potential issues that might counsel against adopting the trademark.

Incorporating all of these elements into trademark clearance research results in a broad and highly-informative data set that will allow you to make an informed decision on whether or not to go ahead with your chosen name.

Plus, it is critical to keep in mind that “common law” trademark rights exist even in the absence of a registration. As a result, someone who hasn’t yet applied for registration could still have very real – and very valuable – rights that they fully intend to protect. This is why searching state and online resources is such a critical part of the process. Even if you can file for registration to cut off the scope of their rights (“common law” rights remain intact, but cannot be expanded once a trademark registration application is filed), this still does not give you exclusive rights altogether.


In summary, trademark clearance research is a vital step in the brand development process, and is well worth the investment. By performing trademark clearance research small business owners and entrepreneurs can help keep themselves out of trouble and get off on the right foot toward building a valuable and lasting brand.

Options for Doing Trademark Clearance Research – Pros and Cons

Traditional Options:

Traditionally business owners have had only two options when it comes to performing clearance research: they can either run a few searches on Google and the USPTO website, or they can pay for an attorney to purchase and analyze an expensive outsourced commercial search report. The first option is obviously quite cheap, but it lacks sufficient data and organization of results to really support any meaningful analysis. The second option has the benefit of professional review and comprehensive search results, but of course these come with a (somewhat hefty) price and some lag time before you get your results.

Web-Based Research Software:

Web-based trademark clearance research, such as  TrademarkIntel™,  fills the gap between the first two options.  It provides small business owners with instant access to search results from numerous data providers, and integrates those results into a single interface with additional tools for performing the necessary analysis. This software is either pay-per-search or subscription-based, but the costs are well below those associated with traditional outsourced searching options.

This is a guest post by Jeffrey Fabian, CEO at TrademarkIntel™. The TMIntel™ software application  provides entrepreneurs and business owners with an instant, cost-effective solution for conducting their own trademark clearance research. The software allows users to search multiple related terms (for the “confusingly similar” analysis), see which search results apply to which terms, and receive all of this information in both an online interactive interface and in an enhanced downloadable file that itself can become valuable tool if someone else tries to claim that they adopted a similar trademark first. You can see the software in action on our YouTube channel.

Image source: Naypong /

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{ 1 comment… read it below or add one }

Martina Iring January 18, 2012 at 3:32 pm

Thanks for sharing your expertise with us Jeff! Great to learn more about the whole trademark thing.


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