Comprehensive Clearance Search
Even if the preliminary screening search does not reveal any potentially conflicting uses, it should not be relied upon to conclude that the selected trademarks could be adopted and used. A comprehensive clearance search and opinion process will provide a realistic assessment of possible obstacles to adoption of a trademark, based on a comprehensive search of most available resources.
The decision on whether or not to conduct formal research will be based on several factors. Perhaps the most important is the amount of financial risk you will have in naming the product. If the future of your company or tens of millions in sales hangs on the value of the name, you must be much more careful in its selection. You would hate to invest large sums in product identification, packaging, advertising, merchandising and other brand building activities only to learn that your potential customers are turned off by the name or that it is confusingly similar to someone else’s. In general, the more at risk, the more careful you should be. Even if you feel confident enough to forego a clearance search because the trademark has already been in use for some time without encountering obstacles, this does not mean that a search might not uncover significant risk of a challenge to your continued use of the mark.
Thus, in most instances, you should have a trademark attorney conduct a full comprehensive clearance search. This process will involve independent, comprehensive database searches of federal trademarks, state trademarks, business names, Internet domain names, World Wide Web sites, and the like, including extensions of international registrations seeking trademark protection in the U.S. Full searches cast a wider net than prescreening searches, not only in the source material search, but in the variations on the mark, and in some cases, the breadth of the related goods on which the marks are used.
If you plan to market your product in other countries, you may wish to have searches conducted in those countries as well. Unfortunately, there is no single database to search to clear a mark internationally, although there is some centralized searching available based on international treaties and agreements. Because the process can get expensive, you should start with those countries where you plan to sell either now or in the future
Another advantage to a comprehensive search and accompanying legal opinion arises in the context of a trademark infringement lawsuit. A more thorough and detailed written opinion could be useful if the client is sued for trademark infringement, and the plaintiff asserts that the infringement was willful. An allegation of willful infringement can potentially triple the damages awarded in a case, or allow for damages based on the client’s profits, as well as attorneys’ fees. In such a case, a counsel’s opinion that the proposed mark would not be likely to infringe could serve as a defense to willfulness. Also, a defendant’s good faith in adopting the mark is a factor that weighs against a finding of infringement. A client may even be able to rely on a well-written opinion based on a preliminary knock-out search.