Clearing Trademarks: Back to Basics with Practical Tips and Tricks

• Author: Amy A. Abeloff
• Position: Amy A. Abeloff is an associate at Seyfarth Shaw LLP in Los Angeles. She specializes in global trademark portfolio management. She can be reached at aabeloff@seyfarth.com.
• Pages: 58-60

©2019. Published in Landslide®, Vol. 11, No. 5, May/June 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or

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Clearance is one of the touchstones of trademark port-

folio management. Conducting even a simple search

of the trademark register and common law use online

can save clients a lot of time, money, and headache.

Sometimes the cost of clearance (be it attorney fees

for running initial clearance, ordering third-party investiga-

tions on relevant use references, or vendor searches) or a

client’s attachment to a particular brand name deters them

from completing clearance. The temptation to “simply le” or

start using a mark materializes with a host of unintended con-

sequences, not the least of which is receipt of a demand letter

from a prior registrant or user, or even service of a complaint.

This article offers guidance on how to conduct trademark

clearance, tips and tricks for searching the U.S. trademark

register, things to consider in the event of a conict (from a

practical and ethical angle), and overall suggestions on how

to effectively counsel clients through the trademark clearance

process.

Hypothetical Trademark Search

It has been a while since you have cleared a

trademark (or perhaps you have never cleared a

trademark). You’ve been asked to see if SKYLAR

for “candles” is available for use and registration in the

United States. Your rst instinct is to search using an Inter-

net search engine. Five minutes later, after not nding

anything for SKYLAR for candles, you report that it is avail-

able for use and registration and are asked to le a use-based

CLEARING TRADEMARKS

Back to Basics with

Practical Tips and Tricks

By Amy A. Abeloff

trademark application for SKYLAR for candles. After being

given all of the necessary details to do so, you le.

Fast forward ve months and you have been issued an

ofce action against the SKYLAR application on the basis of

a likelihood of confusion with SKYLER for “candles.” You

review the ofce action and nd that another company owns a

trademark very similar to the trademark you advised appeared

available to use. You have also received a letter from the

owner of the SKYLER trademark, demanding that your client

immediately cease use of the SKYLAR mark for candles and

expressly abandon the application you helped le. Now you

have an upset client, who has already poured $1 million into

marketing, branding, and product creation for its SKYLAR

line of candles.

While the above hypothetical is not meant to be reminis-

cent of a law school exam question, nor is it meant to educate

about trademark ofce actions and other aspects of portfolio

management, it does seek to paint a picture of potential pit-

falls that could have been avoided with a few fairly simple

steps in the form of trademark clearance.

How Do I Clear a Trademark?

Trademark clearance is more of an art than a sci-

ence. There are many ways to do it and none of

them are gospel per se. The rst step in conducting

trademark clearance is performing an initial search. An ini-

tial search involves a brief review of the trademark register

(Trademark Electronic Search System (TESS), tess2.uspto.

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