Trademark Selection & Clearance 101

Trademarks, services marks and logos for a company's brands or products can be among the most valuable of its intellectual property assets. Weak marks that are too descriptive of the nature of the goods or services provided, or marks that are already used and/or registered by third parties do more harm than good. Either of these situations can lead to wasted marketing dollars and lost customer goodwill when the company finds out the mark cannot be registered, or is already being used by a third party with similar goods or services.

It is crucial to select a trademark that is eligible for the strongest protection, and associated with the least amount of risk in the marketplace. To create a strong intellectual property foundation, the company must conduct a full clearance search to determine what marks are currently in the marketplace, and whether the mark is registerable or usable. This invaluable step is too often overlooked or skipped as non-cost effective.

This course, presented by Randy M. Friedberg, a partner with White and Williams, LLP, reviews the art and science of the numerous factors to consider when determining the strength of a trademark and evaluating the chances of receiving a registration. The course also offers practical steps on how to best conduct clearance searches and evaluate the likelihood of confusion with other marks in the marketplace.

Learning Objectives: 

1. Grasp the fundamentals of what a trademark is and how it is used
2. Become familiar with the trademark strength spectrum and how to select the best possible trademark
3. Understand how to engage in the search process, both in-house and via a commercial company
4. Learn how to assess threats to registration and use through analyzing a clearance search