Trademark Searches

A Trademark Conflict Search, also called a Trademark Availability Search or Trademark Clearance Search, is probably the most critical part of the entire process of establishing a new brand or trademark on the market.

This is because one of the problems that must be feared in this process is the existence, unknown to the applicant, of an identical or confusingly similar trademark, used for the same or related products or services, in the market of the country of interest – whether it is already in use, registered, or pending registration.

The existence of a similar trademark on the market and/or in the trademark register of the country of interest can create two main problems.

First, it can expose the new user of the trademark to infringement claims and their potential consequences.

Second, applying for registration of a trademark that is identical or confusingly similar to another trademark that is already registered or pending registration can result in the refusal of the application on the ground of likelihood of confusion. This can mean losing the money already invested in the registration project, including professional service fees and government filing fees.

The likelihood of confusion that is assessed in a trademark search is essentially the likelihood of confusion in the minds of consumers. A consumer who encounters a product bearing a trademark that resembles another trademark may become confused and purchase the new product believing, in some way, that it originates from, is affiliated with, or is connected to the original trademark owner. This can ultimately result in harm to the original trademark owner and its business.

For all these reasons, a trademark conflict search is extremely important and should be performed by professionals who understand both the trademark register and the principles governing likelihood of confusion.

A proper search can take several hours—not simply to locate potentially similar trademarks, but to analyze the individual records and determine whether each one is actually relevant to the proposed trademark. This is not always straightforward. One must understand the register, the nature of the goods and services, the status of each record, and the circumstances in which a trademark that initially appears relevant may, upon closer examination, present little or no actual concern—and vice versa.

AI can certainly assist with trademark searching and analysis, but AI can make mistakes, and it does. Professional judgment remains essential when assessing whether a particular trademark represents a meaningful conflict and what level of risk it may present.

We take trademark searches very seriously. With many years of experience in trademark clearance, we have been highly successful in assessing the risks of potential conflicts and the registrability of proposed trademarks.