Trademark Clearance Caveats

There are many uncertainties inherent in trademark clearance. Please be aware of the following qualifications and limitations:

  1. Subjective Nature of Trademark Clearance

1.1.  Whether one mark infringes or dilutes another is a subjective judgment, normally reached after balancing a number of factors, not all of which can be assessed by normal trademark search methods. The only definitive answer to whether one mark infringes or dilutes another comes from litigation, and nobody can predict the outcome of litigation with certainty.

1.2.  Marks such as LONDON FOG and SMOG, PLEDGE and PROMISE, and CYCLONE and TORNADO have been held to be too similar to coexist on the basis of meaning. There is no search methodology that is particularly well designed to find such conflicts.

1.3.  Whether certain problems materialize or do not is decided by potentially adverse parties whose decisions may be based on emotion or some other factor besides legal analysis.

  1. Database Integrity

2.1.  Trademark rights arise from use, and there is no requirement that a trademark that is used be registered or listed anywhere. Therefore, we cannot confirm that no marks exist that might give rise to a conflict or claim. If you are or become aware of marks not identified by the Firm, please bring those marks to our attention.

2.2.  Databases relied upon by the Firm or by outside suppliers, while generally current, reflect some delay in reporting of the data and in entering the data into the database. The integrity of the data in the databases we use is high, but not necessarily perfect. Similarly, the analysis by outside search firms that goes into the preparation of their reports is generally good, but not always perfect.

2.3.  Treaty obligations permit marks applied for in scores of foreign countries to be filed in the United States within six months of their foreign filing date and to receive as a priority date their date of foreign filing. There is no practical method of searching for such marks before applications for them are filed in the United States.

  1. Clearance Limited to Exact Mark in Specific Territory

3.1.  Our analysis addresses registration and use in the United States in connection with certain goods and/or services. If you anticipate use of the mark in other countries and/or in connection with different goods and/or services, please advise us of that fact.

3.2.  Our analysis applies to the exact mark searched. Any change in the mark – even a minor one – could affect our opinion and could require additional analysis. If you decide to change the mark, please advise us of that fact.

  1. Design Marks

4.1.  It is not possible to search designs, whether manually or by computer searches keyed to design codes, with the thoroughness or precision of searches for word marks. Search reports only review those that are on the United States Federal Trademark Register.