Any brand-building process starts with ensuring your name/logo/slogan is unique and highly likely to be registered as a trademark at the USPTO. A topic that often comes up during any trademark application consultation is the difference between a knockout search and clearance versus a comprehensive search and clearance. As a brand owner, it is essential to understand the difference between the two.
What is a Knockout Search & Clearance?
Before applying, a competent trademark attorney will conduct a preliminary search of the USPTO database to uncover identical or similar marks. The purpose of conducting this search is to determine if there are any marks for which the examining attorney at the USPTO might raise a likelihood of confusion refusal. The quality of the searches depends on the attorney’s search skills, and almost any trademark attorney worth their salt will be conducting a basic search & clearance.
A knockout search & clearance can help discover pending or registered marks that might be an obstacle to a brand owner’s registration. Solutions to this include arguments against the likelihood of confusion, disclaimers, consent/coexistence agreements, and crafty descriptions of the brand owner’s goods and services.
Will a Knockout Search & Clearance cover everything?
Simply put, no, it will not. The search will cover mostly word marks and will be limited in providing similar results when dealing with design marks (logos). To inquire about the registrability of design elements in a mark, it is best to consult your trademark attorney regarding a third-party “Comprehensive Search.”
A knockout search & clearance is to uncover prior or current filings that might be considered identical or similar to the applicant’s mark. Therefore, the search could be more extensive in helping anticipate other types of rejections. These are rejections that a competent trademark attorney will advise you on during the development and management of your brand portfolio.
Why do I need a Comprehensive Search?
The difference between a comprehensive and knockout search is similar to walking into a dark room with a candle or turning on the light bulb. The light bulb might not uncover even the darkest corners of the room, but at least it’ll give me a better idea of the layout.
A comprehensive search helps determine the registrability of design elements in marks. Beyond that, it can uncover most common law trademarks, state trademarks, and trademarks registered in foreign jurisdictions that might be obstacles to your brand’s registrability.
Advantages of a prefiling trademark search:
That is the goal when conducting a search, whether knockout or comprehensive. Its purpose is to get a layout of the brand marketplace and to determine the following:
- Is your brand protectable?
- Are there any obstacles to your application? If so, are there proactive measures a brand owner can take to increase their chances of registration?
- Are there any rebranding issues the brand owner needs to consider?
- Are there third parties who would proceed with TTAB opposition/cancellation proceedings?
- Is the brand at risk of trademark infringement and vulnerable to a federal lawsuit?
The advantages of understanding the risk exposures of a brand owner are plenty. Mainly, it helps avoid future financial waste in rebranding and litigation. But most of all, with an application process that is already lengthy, it helps prevent further delays in ensuring your brand is protected.
Have questions about trademark applications? I’m always here to help – don’t hesitate to reach out if you need guidance on anything related. You can contact me by scheduling a discovery call and we’ll be happy to answer all those questions that have been on your mind. During this call, we can discuss your needs in more detail and develop a tailored plan.
DISCLAIMER: The information in this blog is not intended nor implied to be a substitute for professional legal deliberation, deposition, or procedure. All content, including text, graphics, images, and information, contained in this video is for general informational purposes only and does not replace a consultation with your own attorney.
DrishtiTalks is made available by the law firm, Drishti Law, LLC, for educational/informational purposes. The intent of DrishtiTalks is to provide a general understanding of the law and not to provide legal advice. The use of this site, commenting on posts, or sending inquiries through the site or contact email, does not confirm an attorney-client relationship between you and the Blog, DrishtiTalks, or Website publisher, Drishti Law, LLC. The Blog/Website should not be used as a substitute for competent legal advice from a licensed attorney in your jurisdiction.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here
You may follow Sahil Malhotra on Facebook: Sahil Malhotra and on Instagram: @Sahil Malhotra