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Clearing for Launch: Crafting the Trademark Search Opinion
Practical Law Legal Update 4-598-6346 (Approx. 6 pages)
Clearing for Launch: Crafting the Trademark Search Opinion
by Practical Law Intellectual Property & Technology
| Published on 10 Feb 2015 • USA (National/Federal) |
A discussion of key considerations in searching trademarks and drafting a trademark clearance opinion letter. Topics include whether to issue an opinion in writing, what that opinion should contain, how to format it and how to deal with negative results.
Most attorneys know that trademark searching and clearance are important investments in any new product or service launch. When done properly, trademark searching and clearance reduce the risk that the client or company will:
- Have to stop using the new product or service name.
- Be forced to pay damages and legal fees to resolve infringement and other trademark claims.
- Adopt a mark that may not be protectable without substantial investment, or at all.
A full trademark search request to an outside vendor may yield hundreds of pages of results. So how should counsel get the most vital search information to the client?
The Clearance Opinion
Though not generally required by law, trademark clearance is often critical for managing the costs and risks of adopting a new mark. Trademark searching and clearance allow counsel to advise clients on a mark's:
- Availability, specifically that it does not conflict with identified prior rights.
- Protectability under the Lanham Act.
- Registrability with the US Patent and Trademark Office (USPTO).
The ultimate product of the searching and clearance process is a trademark availability or clearance opinion by counsel. Counsel must carefully analyze the results of a trademark search so that:
- The client can understand and rely on the opinion and recommendations.
- A court is likely to find that the client was justified in relying on the opinion if it is ever disclosed in litigation.
For a customizable template for a trademark clearance opinion letter, including helpful drafting tips, see Standard Document, Trademark Clearance Opinion (Outside Counsel).
To Write or Not to Write
Depending on the circumstances and the client's preference, counsel may give a clearance opinion orally or in writing. For example, some clients prefer to receive an oral opinion either:
- Regardless of the conclusion, for example, to avoid fees for counsel's time in drafting the formal opinion letter.
- To avoid a written record of a negative opinion.
Dealing with Negativity
Many clients do not want to receive a negative opinion in writing. If there is room for disagreement about a referenced mark or two and the client proceeds with the adoption and use of the candidate mark, the written negative opinion, if produced in litigation, could unfairly prejudice the client. On the other hand, some legal departments may want a carefully crafted negative opinion to convince a marketing department that the candidate mark should not be adopted.
Before drafting the opinion, counsel should discuss with the client the implications of putting a negative opinion in writing and learn the client's preference when there are negative results to report and about receiving written opinions in general.
What to Include in the Clearance Opinion
To capture all of the relevant information from the search report, the opinion letter typically tracks the report by including sections about the results for each of the following areas:
- USPTO application and registration records.
- State trademark registrations.
- Common law and company name databases.
- Domain name databases.
- Websites.
For more on what should be included in a trademark search opinion letter, see Standard Document, Trademark Clearance Opinion (Outside Counsel).
How to Format the Clearance Opinion
The opinion letter's format depends on the client's needs and sophistication and the attorney's style.
Before drafting the written opinion, counsel should confer with the client about the opinion's format and depth of discussion. Factors that influence how counsel drafts the opinion letter include:
- The client's risk tolerance.
- The proposed mark's fields of use.
- Whether the opinion is negative.
For clients with a lower risk tolerance, the opinion typically discusses more references and provides more detail for any distinguishing references.
An example of a field of use that can affect how counsel drafts the opinion is the pharmaceutical industry. Because of public safety concerns, the USPTO and the courts apply a higher duty of care for evaluating the likelihood of confusion of pharmaceutical marks.
Ultimately, for the client to be able to rely on the opinion in deciding to adopt and use the candidate mark, the opinion must contain a logical and thorough analysis of why there is no likelihood of confusion with the marks identified in the report.
For more on how to format a trademark clearance opinion letter, see Standard Document, Trademark Clearance Opinion (Outside Counsel): Drafting Note: Format of the Opinion.
A Caveat about Caveats
Counsel often needs to let the client know about the legal and practical limitations of the search report. For example, an attorney may need to:
- Explain the effective dates for the databases in which the searches are run.
- Warn that a third party may have filed a new and relevant trademark application after the date of the search that counsel was unable to consider in drafting the opinion letter.
A caveat summary incorporated into the letter or appended as an exhibit addresses these issues and is particularly important for clients who are unfamiliar with a search's coverage or reliability. Counsel should typically include relevant caveats or disclaimers with every opinion letter.
For more information about the caveat summary, including a customizable example, see Standard Document, Trademark Clearance Opinion (Outside Counsel): Drafting Note: Caveat Summary.
Practical Law's Trademark Searching and Clearance Resources
The Standard Document, Trademark Clearance Opinion (Outside Counsel) includes helpful notes and drafting tips about these opinion issues and also:
- How to deal with representation conflicts.
- How to organize the opinion.
- What to send to the client.
- Other issues counsel face when clearing trademarks and formulating the opinion.
Practical Law has several other resources to help practitioners search and clear trademarks and counsel clients about trademark clearance and registration issues, for example:
- Trademark Searching and Clearance Information Checklist identifies what information to request from the client before conducting the search. Alternatively, our Standard Document, Trademark Search and Registration Questionnaire can be used as a template for requesting that information from the client.
- Practice Note, Trademark Searching and Clearance has guidance on the search and clearance process, including:
- deciding between a preliminary (knock-out) search and a comprehensive (full) trademark search;
- analyzing search results;
- conducting any appropriate use investigations; and
- assessing the suitability of any additional clearance steps, for example pursuing a coexistence agreement or consent agreement.
- Article, Trademark Searching and Clearance: Don't Make These Mistakes contains valuable practice tips.
- Practice Note, Acquiring Trademark Rights & Registrations provides additional information for assessing the inherent protectability and registrability of trademarks.
- Registering a Trademark Checklist has step-by-step guidance on preparing, filing and prosecuting a trademark application in the USPTO once the proposed mark has been searched and cleared.