Clearing Trademarks: Back to Basics with Practical Tips and Tricks

AuthorAmy A. Abeloff
PositionAmy A. Abeloff is an associate at Seyfarth Shaw LLP in Los Angeles. She specializes in global trademark portfolio management. She can be reached at
©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
disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
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
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
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.
Images: iStockPhoto

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