Clearing Trademarks: Back to Basics with Practical Tips and Tricks

By Amy A. Abeloff

©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 portfolio 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 investigations 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 file” or start using a mark materializes with a host of unintended consequences, not the least of which is receipt of a demand letter from a prior registrant or user, or even service of a complaint.

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