Trademark Search and Clearance: Essential Steps Before Registration

Trademark Registration Research

Searching databases and vetting conflicts before trademark registration sets applications up to cruise through approval by avoiding rejections. Putting in that legwork ahead of time can pay off by paving the way to register your mark smoothly.

December 30, 2023

Seeking federal registration for your trademark? While seemingly straightforward, navigating the United States Patent and Trademark Office (USPTO) process requires understanding key prerequisites that enable smooth approval.

This guide outlines critical groundwork – comprehensive searches, risk analysis, strategic decisions – that set the stage for securing your trademark rights uneventfully. Follow these vital pre-registration steps for the highest probability of registration success.

1. Search USPTO Database

Mind map outlining the steps for searching the USPTO database

Key steps in searching the USPTO database for trademarks

    • Check TESS: Review the USPTO’s Trademark Electronic Search System for pending or registered marks identical or very similar to yours.
    • Assess Goods/Services: Carefully evaluate if any revealed applications or registrations cover the same or closely related offerings you plan to provide.
    • Note Important Details: If conflicting marks exist, determine their application/registration date, goods/services details, legal status and other specifications.


    • Daniel’s TESS search uncovered an identical registered mark for his planned goods. He noted its registration date, owner details, legal status and more.

How to Proceed:

    • If no conflicting marks exist, document search details and proceed to clearance searching.
    • If conflicting marks found, consult an attorney regarding risk analysis and strategies to differentiate your mark.

Frequently Asked Questions:

    • What parts of the TESS record for revealed marks should I document? The owner, goods/services details, dates, legal status and other key specifications.
    • What if my mark is highly similar but not identical? Consult an attorney, as highly similar marks also risk rejection and may need differentiation strategies.

2. Clearance Search Beyond USPTO

Mind map highlighting the clearance search process beyond the USPTO

Exploring clearance search steps beyond the USPTO

    • Search Broadly: Look beyond just the USPTO databases for unregistered trademarks that could still challenge your application.
    • Assess Strength: Unregistered but actively used marks can still prevail against your application, so evaluate conflicting marks carefully if revealed.
    • Engage Experts: Hire professional search firms for comprehensive clearance searches across various trademark databases, registries, domains and online sources.


    • Although Rachel’s mark was unregistered, evidence of its strong online usage blocked Sam’s attempt to register an identical trademark.

How to Proceed:

    • If no conflicting marks found, document details to include with your application.
    • If conflicts exist, analyze risks then differentiate your mark, restrict goods/services or reassess registration viability with an attorney.

Frequently Asked Questions:

    • How extensively should I search beyond just USPTO databases? As widely as possible across various search engines, domains, state registries, international registrations and more.
    • What details should I document about conflicting unregistered marks? The owner, evidence of current use and commercial strength, specified goods/services and other relevant details.

3. Assess Conflicting Mark Risk

Mind map detailing the assessment of conflicting mark risks

Assessing risks of conflicting trademarks

    • Understand Rejection Risk: Marks too similar in sound, appearance or meaning in relation to related goods/services face rejection due to likelihood of consumer confusion.
    • Know the Boundaries: Even some dissimilar marks get rejected for marks registered to unrelated goods/services if they fall under a famous mark’s zone of natural expansion.
    • Assess Thoroughly: Carefully evaluate revealed conflicting marks regarding visual appearance, terminology, translations and more across all applicable laws and statutes.


    • Ania’s Bella Donna mark for cosmetics was rejected due to the registered trademark Bellissima for skincare products.

How to Proceed:

    • Consult a trademark attorney for expert analysis if any revealed marks present possible rejection risks.
    • Be prepared to restrict goods/services categories or rebrand if necessary to avoid conflicts.

Frequently Asked Questions:

    • What are my options if trademarks posing rejection risks are revealed? Restricting goods/services categories, differentiating branding, petitioning conflicts, among other strategies.
    • Could even non-identical marks get rejected in some cases? Yes, if highly similar terminology or commercial usage is deemed excessively close to avoid confusion.

Summary & Next Steps

With comprehensive USPTO and clearance searching complete, you can either move forward confidently with the federal registration process if no concerning conflicts exist, or engage professional counsel to navigate risks if conflicting marks were revealed.

While not an absolute guarantee of frictionless approval, meticulous pre-registration analysis maximizes your probability of successfully registering your trademark. Feel free to contact us if you need assistance analyzing revealed conflicts, differentiating your brand, restricting goods/services or appealing rejections.

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Trademark Search & Clearance Quiz

      • 1. The USPTO database for searching pending and registered trademarks is: A) TMEP B) TESA C) TESS
      • 2. Clearance searching beyond the USPTO should include: A) State trademark databases B) Domain registries C) International registries D) All of the above
      • 3. To assess risks of rejection, revealed conflicting marks should be analyzed for: A) Phonetic similarities B) Appearance and design C) Meaning and translation D) All of the above
      • 4. Marks too similar for related goods/services may be rejected to avoid: A) Consumer confusion B) Dilution C) Fair use violations
      • 5. Even famous marks in unrelated categories deserve analysis regarding: A) Natural zone of expansion B) Genericide risks C) Coexistence agreements
      • 6. Unregistered but actively used marks found in clearance searching can still: A) Be irrelevant B) Challenge your application C) Automatically yield to your application
      • 7. If conflicts are revealed, next strategic steps can involve: A) Restricting goods/services categories B) Rebranding or altering branding C) Seeking coexistence agreements D) All of the above
      • 8. Hiring professional search firms offers the benefits of: A) Comprehensive database searches B) Expert risk assessments C) Savings of time and effort
      • 9. Failing to search beyond the USPTO risks overlooking: A) State registered marks B) In use common law marks C) Both of the above
      • 10. Analyzing revealed conflicting marks helps determine potential for: A) Trademark infringement B) Application rejection C) Genericide
      • 11. Even after approval, new applications or information could prompt: A) Abandonment of mark B) Reevaluation of registration C) Surrender of rights
      • 12. Seeking an attorney’s counsel is recommended if risks found in: A) 1-2% of revealed marks B) 15-20% of revealed marks C) Any revealed marks
      • 13. Failing a USPTO search risks submitting an application for: A) An already abandoned mark B) An expired registration C) An active registration
      • 14. Conducting periodic clearance searches is wise to check for: A) New conflicts arising over time B) Expired registrations C) Abandoned applications
      • 15. Documenting search details provides: A) USPTO submission requirements B) Evidence to support your application C) Both A and B
      • 16. International considerations warrant: A) Searching just key countries’ databases B) Professional guidance C) Relying on USPTO approval
      • 17. The most frequent reason for trademark application rejection is: A) Likelihood of confusion B) Mere descriptiveness C) Abandonment
      • 18. Assessing conflicting mark specimen evidence helps determine: A) Registration eligibility B) Infringement risks C) Strength of use claims
      • 19. Monitoring trademark watch service notifications can reveal: A) New conflicting marks B) Important status changes C) Both A and B
      • 20. Maintaining accurate goods/services records assists with: A) Preparing new applications B) Avoiding misclassification issues C) Renewal diligence

    • Answers:
      • 1: C) TESS
      • 2: D) All of the above
      • 3: D) All of the above
      • 4: A) Consumer confusion
      • 5: A) Natural zone of expansion
      • 6: B) Challenge your application
      • 7: D) All of the above
      • 8: C) Savings of time and effort
      • 9: C) Both of the above
      • 10: B) Application rejection
      • 11: B) Reevaluation of registration
      • 12: C) Any revealed marks
      • 13: C) An active registration
      • 14: A) New conflicts arising over time
      • 15: C) Both A and B
      • 16: B) Professional guidance
      • 17: A) Likelihood of confusion
      • 18: B) Infringement risks
      • 19: C) Both A and B
      • 20: B) Avoiding misclassification issues

Also See

The Curious Trademark History of Sriracha Sauce