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The Definitive Guide to Trademarks: Clearance, Infringement, Searching, and Purchasing

  • Trademark Clearance

What you’ll learn

Whether you’re a legal counsel, trademark attorney, or new to the field, this guide will provide you with useful insights to help you in your role. We provide an introduction on trademarks, the clearance process, and how your trademarks can be infringed, before detailing how to search for and purchase your desired trademarks.

What are trademarks?

A trademark is a specific form of intellectual property. It’s helpful to think of intellectual property as creations of the mind – the rights to the property belongs to the person (or business entity) that created it. Intellectual property comes in a number of forms. The most common types are trademarks, patents and copyrights.

Trademarks serve the purpose of protecting the names, designs, packaging under which a business markets or sells their goods and services. Patents protect new inventions and copyrights provide protection for literary and artistic works.

There are a number of requirements in different regions that are needed to create or protect a trademark. You must be specific about the products or services which your chosen trademark will represent. Goods and services that are provided by companies fall into a number of categories that are designated by the NICE classification system. Your trademark must be able to make your product or service clearly identifiable from others in the same category or class.

In many regions, you must be able to provide a ‘graphical representation’ of your chosen trademark. This means you must be able to create a likeness of it on paper to submit with your application for registration. However, this hasn’t limited what kind of trademarks that can be registered with even colours and sounds succeeding in gaining registration.

Our article provides more detail about the requirements for your chosen brand to be successfully registered as a trademark.

How do I get a trademark?

The first thing to understand about trademark rights is that they are territorial in nature and the different ways in which you can create or acquire a trademark will always be dictated by the region in which you will be using the trademark and the relevant legislation and regulations.

Your trademark must be unique – something that distinguishes your business or company from others so regardless of the method you might wish to use to establish your rights to your trademark, you must ensure that it is available for use. You do this in a process known as trademark clearance or trademark searching. At its simplest, trademark searching is checking your proposed trademark against existing trademarks to make sure that it is sufficiently different to distinguish your business from others in the same category.

Depending on your region, it may not be necessary (although it is always recommended!) to register your trademark to obtain rights to it. Gaining rights through simply using the trademark is known as ‘common law’ rights and it is necessary to also search these sources of potentially conflicting trademarks in your clearance search.

In some regions, rights granted in using a trademark can go further than common law rights. There are two main systems of acquiring rights in various territories and these broadly split into what is known as ‘first to file’ and ‘first to use’.

Although trademark rights are always dependent on your use of the trademark, in ‘first to use’ regions, the first person to use a trademark has the rights to it regardless of other circumstances (although these protections are never as strong as registered rights) and in ‘first to file’ regions, the first person who registers a brand obtains the rights regardless of who has been using it or created it, although there is a wide variety in how strictly that applies in different regions.

Regional requirements in your particular country should form a critical component of the strategy you use to gain the rights to your chosen brand. Our in-depth article on ‘first to file’ and ‘first to use’ countries, will help you!

What’s the difference between the ‘TM’ symbol and the ‘R’ symbol?

Serving as representations of your goods or services in the marketplace, trademarks frequently appear in advertisements, marketing and other content. In many such cases, symbols will often appear beside the trademarks which can cause confusion as to what they mean exactly.

All regulations and legislation in relation to trademarks are territorial in nature and correct use of these symbols is no exception. There are some generalities that apply to ‘R’ (registered trademarks), ‘TM’ (unregistered trademarks) and ‘SM’ (unregistered service marks) and you can learn more about some of the terms and conditions that apply here.

So by engaging in Brand Protection, you are seeking to prevent someone from infringing your brand illegally by using your intellectual property and/or brand name.

But what is the ‘intellectual property’ we talk of – and is it really all that intellectual? Well no, not necessarily. Intellectual property is simply the legal framework that covers anything you produce that is a ‘creation of the mind’ – which could be an invention, artistic work, or product.

Your intellectual property could be a thousand-page novel or a new type of plug for a sink. Or it could simply be the logos you use to represent your brands.

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Difference between the TM and R symbol - trademarks

Why might my Trademark application be refused?

There are a huge range of reasons why an application to register a trademark might be refused – from problems with the application itself, all the way through to an inability to provide adequate evidence of use of the mark in commerce – and it is not always clear in advance whether your application will ultimately be successful.

A lot of time and resources are used in the preparation for an application and so it makes sense to do as much as possible to ensure you have met the standards for registration beforehand.

While there is much that lies outside of your control, a robust clearance process that will ensure no trademark infringement or confusion with an existing registered trademark will impair your application.

See our in-depth examination of the reasons for a refusal in the USPTO (United States Patent and Trademark Office).

Where is graphical representation required?

‘Graphical representation’ means that you must be able to provide an illustration or stylisation of your chosen mark on paper to accompany your application to register your trademark. This has created challenges for what are termed ‘non-conventional’ trademarks – specific shades of colours or sounds, for example.

Since 2018, that requirement for a graphical representation has been lifted in all Member States of the European Union which should make applications for non-conventional trademarks in Europe where they have not historically had much success.

However, that requirement has not been lifted everywhere, most significantly in the World Intellectual Property Office (WIPO) which oversees international applications under the Madrid Protocol. If you are seeking an international scope of protection for your mark, understanding the requirements for registration within the system that governs your application is critical.

You can read more about requirements for graphical representation and international applications at the link below.

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Trademark graphical representation

How can I tell if my trademark is distinctive?

A core requirement of a successful application to register a trademark (or even to successfully use it in commerce without challenge) is that your trademark is distinctive rather than descriptive.

Descriptive merely means that the trademark only describes an element or characteristic of the product or service – like calling a service ‘speedy’ or a product as ‘anti-aging’. These examples might also fall under another category which is insufficient for registration – generic.

However, that is not always the end of the road. A mark considered too descriptive or generic for registration can acquire distinctiveness over time but that is a long slow road to registration or acquiring a scope of protection for your brand.

Getting guidance on the ‘strength’ of your proposed mark (I.e., how distinctive it is) before deciding on a strategy can save you a lot of lost resources and time. You can start by reading more on distinctiveness versus descriptiveness here.

What is likelihood of confusion in Trademarks?

The specifics of how to clear a trademark for use or registration is perhaps one of the most complex aspects of trademarks but the concept of ‘likelihood of confusion’ runs a close second.

‘Likelihood of confusion’ is an assessment of how likely it is that your proposed mark might be confused for another existing mark by the general public – or at least the part of it likely to be in the market for your goods or services.

This assessment goes a lot further than merely comparing whether the two marks are identical and take in elements such as phonetic similarity (sounds like) and visual similarity (looks like).

For assistance in determining for yourself whether your mark has a high likelihood of confusion, you can start with learning about the seven key factors for identifying likelihood of confusion here.

How to search Trademarks?

There are a number of stages to a trademark search process. How many of the stages you will need will depend on your proposed trademark, business, intentions and experience. The major stages consist of a preliminary search, similarity search, comprehensive or full search and legal opinion. There are additional considerations in relation to figurative trademarks.

How do I reduce the results I get in a search?

The data set that returns as a result of a comprehensive search (or even a preliminary search) can be underestimated but there is a difference between information and relevant information that impacts your trademark. A lot of results are not necessarily an impediment to registration.

Trademark experts will take a number of strategic steps to focus the search more narrowly on relevant areas. As a consequence, the results that are returned for your review are not only reduced, but of higher relevance. You can read more about some of the ways in which they do this here.

Why do I need to watch my trademark?

Your journey does not end with achieving a successful registration. The scope of protection that you have acquired must be maintained. There are a number of ways in which you can diminish or lose that scope of protection but they separate into two broad categories – not adequately maintaining or using your mark and the actions of the others.

In the first category, common issues include a failure to renew your trademark protection in a timely manner or not using your trademark adequately which permits others to bring an action to have your trademark declared invalid.

Trademark watching is a process designed to protect you against the actions of others.

What is trademark infringement?

Trademark infringement (unauthorised use of your trademark) can lead to loss of distinctiveness or becoming generic and over time, can lead to loss of your rights. Trademark dilution (while it is a form of trademark infringement) differs from trademark infringement in that it is not necessary to demonstrate likelihood of confusion to prove dilution. There are defences to an action for trademark dilution, mainly that the unauthorised use consists of fair use or parody of the trademark.

It is important to understand that the responsibility for maintaining and protecting your trademarks and other intellectual property lies with the trademark owner. While Intellectual Property Offices maintain registers of trademarks, they do not monitor online and offline markets in order to protect your trademarks.

What are some examples of trademark infringement?

Every year, thousands of cases come before the courts globally in relation to trademark infringement. While the vast majority of those cases relate to run-of-the-mill infringement, there are cases that examine new challenges or types of infringements and create precedents for how these cases will be handled going forward. Some of the bigger cases from 2022 include:

Examples of trademark infringement

Red Bull Vs Bullards

Red Bull are widely known for their proactive stance in protecting their trademarks and 2022 has proven to be no exception with a David and Goliath case warming up in the UK. Bullards Spirits are a small, award-winning brewery and distillery who filed an application to protect the name ‘Bullards’. Red Bull opposed the application on the grounds that the name would cause likelihood of confusion with their trademarks. Ultimately, in October 2022, the UK courts held that there was no likelihood of confusion and stated that just because a name contains similar elements (in this case, the word ‘bull’) it does not necessarily constitute likelihood of confusion nor infringement.

Hermes Intern Vs Rothschilds

The world of luxury fashion clashed with the oncoming Metaverse in this case involving the use of images of Hermes famous Birkin bags in the creation of NFTs (non-fungible tokens) called MetaBirkins. While the case has not yet been decided, an application in May 2022 to have the case dismissed on the basis that the use of the images and name constituted ‘artistic expression’ was overturned. As the case proceeds, it will shape how images and names from iconic and well-known brands can or can’t be used in the production of digital artworks such as NFTs going forward.

What is common law infringement?

Many types of businesses, particularly small businesses, use brands and trademarks under the common law system or as unregistered trademarks. This can be problematic for bigger corporations in searching for trademarks as unregistered trademarks are more difficult to find. There are many considerations dependent on the region in which your business operates.

Knowing the system that applies in the region in which you do business is critical to success. In ‘first to use’ countries, protections for common law use of brands and trademarks will be stronger than in ‘first to file’ countries’.

Regardless of whether the country in which you operate is ‘first to file’ or ‘first to use’, the protections that apply to unregistered trademarks will always be weaker than those that apply to registered trademarks, so caution is always required.

Domain names (your business name on the internet) are protected in many countries and those need to be checked separately. There are challenges related to domain names as these are regulated differently than trademarks and while you can absolutely purchase a domain name that is similar to an existing brand, you may not be permitted to use it in commerce.

Apps and app stores can be a source of similar headaches – again the regulation of these exists outside of the realm of trademark registrations but nonetheless you must have the right to use the names, brands and designs that you choose from a trademark perspective.

Many pitfalls await the unwary in the unregistered or common law use of intellectual property, you can up to speed with a more in-depth investigation of potential issues.

Do I need to worry about other languages?

While the answer to virtually every legal question is: it depends, two trademarks are considered to be the same if the meaning is the same so in short, language matters. This applies particularly strongly for famous marks which have a greater scope of protection in any event. Consequently, the ability to monitor your brands in other languages is an important one worthy of consideration. The elements of trademark infringement in other languages are complex; you can read more about them here.

Can I buy an existing trademark?

The creation, clearance and protection of a novel trademark is a long and sometimes expensive process which can raise the question ‘can I buy a trademark and if so, how do I buy a trademark and is it easier than creating and registering a new one?’

Unfortunately, what many discover is that the elements of purchasing a trademark are the same as creating one. You still need to assess the risk level of the trademark in question and how safe it is for use in much the same way you would assess a novel trademark.

You also need to be clear about how you will use the trademark, the value it will deliver in your marketplace, the difficulties that the pre-existing use of the trademark might present in transferring it to your company and whether it represents a long-term support for the goals of your company or a temporary solution. These factors will determine not only whether you should move ahead with a purchase but also impact the price you are willing to pay.

Common law issues can affect the purchase of a trademark in the same way as a novel trademark and so you will still need to check your proposed purchase against common law sources, domains and app stores. Depending on your intended use of the trademark, there may be international and language considerations to be taken into account also. There are many factors involved in considering whether to buy a trademark, you can read more about Trademark Screening here.

Can I buy a ‘dead’ trademark?

The advice above relates to the purchase of a trademark that is currently in active use or ‘live’. A ‘dead’ trademark is one that has been abandoned, mainly through lack of use although there are other region-dependent factors. In some regions, a trademark has not been abandoned until it an intention to resume its use has been made clear by either action or inaction.

There are many things that you need to think about – how long the trademark has been abandoned, the reason why it has been abandoned or now considered to be dead, whether it is still being used despite not being renewed and what its value might be to you. Ultimately, the safest way if you are determined to purchase a particular dead trademark, is to track down the owner and purchase or obtain permission to use it directly from them.

Despite surface appearances, it is not a simple matter to purchase a dead trademark. You can get more guidance on potential problems and challenges at the link below.

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Can I buy a dead trademark

What about purchasing a trademark as part of a franchise deal?

The area of franchising as it relates to trademarks is a fascinating one. Although you do acquire rights to use a trademark or brand as part of a franchise deal, it rarely involves purchasing the trademark in question, nor having the sole rights to use the trademark.

Instead, it involves a license to use existing trademark owned by the parent corporation although in international situations, this may also involve translations and transliterations to other languages and alphabets. There is a lot to consider and our in-depth article on the role of trademarks in franchising can help you understand the way forward.