Trademark and brand clearance

You have selected a new trademark to use for your business. You hired a marketing company to develop a new brand identity based on that trademark and have spent $150,000 printing material, developing a website and otherwise launching your product or service into the marketplace in three countries. You receive a cease-and-desist letter from a lawyer indicating that his client has previous rights to the use of that name in the market on the products and services of your company, alleging that you are infringing his client’s trademark rights and making various demands. Surely this must be a mistake – you call the marketing people to find out if a search was conducted or otherwise if steps were taken to minimize the risk associated with this type of a scenario and find out that either nothing or very little was done following the selection of the attractive trademark to ascertain its legal availability for your purposes in the markets of question. Now what?

Once you have selected a new trademark it is important to do a search to understand if there are problems in the marketplace which could inhibit your launch or adoption.  The two key items which we can consider in the preparation of a trademark search are the registrability of the trademark, that is to say whether or not the trademarks office in the country in question would have any issue with the granting of a trademark registration in respect of a particular proposed trademark, and whether there are any issues with the adoptability of the trademark in that marketplace. Adoptability is such a key issue since in many cases it may be possible to obtain a registration based on the status of the federal trademark register in the country in question, but there may be unregistered trademark rights in that marketplace which create the infringement or adoption risks which a client should know about in advance of finalizing their strategy.

It is possible for trademarks to coexist in the marketplace if they are used in different channels of trade and so to the extent that other trademarks exist that are visually or orally similar to your own potential trademark knowing the channel of trade in which you propose to use it is important.  Different types of trademark searches can be conducted for different purposes.  Consideration of adoption and infringement risks is a very important layer of diligence, in addition to a registrability analysis, so that you do not seek to register a trademark that would necessarily cause confusion and potentially infringement liability on your part vis-à-vis a third party in the marketplace.  Even though a trademark may be registrable, there may be common-law usages or other competing positions in the marketplace which, as a result of their status, may pose a problem in terms of a previous use or priority position in the marketplace in your channel of trade.

In addition to assisting with specific brand clearance searches and projects, if you have a company that has a significant ongoing marketing function in which regular clearance strategies are regular clearance searching is required we can assist you with the implementation of the necessary workflow steps to ensure that appropriate clearance steps are identified and taken at the right time in your internal business work process.