Updated November 16, 2020:

A trademark clearance opinion letter sample is a template written by an attorney to confirm that a trademark for a new product or service has been cleared, meaning that no similar trademarks are currently in use. Having a trademark clearance search done prior to your product loss prevents:

  • The need to discontinue use of the mark because it infringes on a similar mark
  • Legal fees to defend infringement lawsuits and resulting damages
  • Adoption of a mark that cannot be protected from infringement

Purpose of Trademark Clearance

Although trademark clearance is not legally required to register a new mark, it helps companies manage the risks and expense of doing so. By conducting a clearance search, an attorney can advise his or her client that their desired mark:

The attorney will analyze the results of the trademark search and provide an opinion letter on the availability of the mark. This allows the client to rely on solid legal recommendations and this can be used as evidence if the mark is ever challenged in court.

Common trademark clearance search types include preliminary searches, comprehensive searches, and exact ("knock-out") searches.

Elements of a Trademark Clearance Opinion Letter

A clearance opinion can be provided either orally or in a written letter. Clients may prefer an oral opinion to avoid drafting fees and prevent a negative opinion from being recorded in writing. A negative opinion in writing could be used in litigation if the client adopts a mark against attorney recommendation. However, a written opinion letter can help sway a company's marketing team against adopting a mark.

The format of a written letter can vary depending on attorney and client preferences. The attorney should consult with the client about the format before drafting the letter. In addition to whether the opinion is negative, contributing factors may include the field of use of the mark and the client's risk tolerance. The lower the risk tolerance, the more references and detail a letter should provide. An example of the role of field of use is the increased detail needed for trademarks in the pharmaceutical industry because of concerns for public health and safety.

The trademark opinion letter must include a complete, thorough, and logical analysis that indicates minimal likelihood for confusion in order for the client to rely on this opinion in a decision to adopt the mark.

A trademark opinion letter should include:

  • The introduction of the letter should identify the mark in question and the services and/or products it covers, along with the name of the client, the area covered by the search, and other key information. You should state that you are providing the information in the letter on behalf of your client at his or her request. Stamp the letter "Confidential" or "Attorney/Client Privileged."
  • Summary and analysis of search results from websites, domain name databases, company name and common law databases, state trademark registrations, and USPTO registrations.
  • Explanation of the dates when the searches were completed and a caveat that a new trademark application may have been filed by a third party after the search but before completion of the opinion letter. This caveat summary is especially important for clients who are unfamiliar with the search process.

Examining Risk

A business should consider the following factors when determining the desired risk threshold when adopting a new trademark.

  • Class selection: The more marks in your trademark class based on the Nice Classification System, the higher the risk of adopting a mark in that class.
  • Similarity of goods and services: How likely is it that your product or service will be conflated with those of other companies?
  • Alternative meanings: Does the mark have meanings in other languages? Are they negative or positive?
  • Case law precedent: Was the mark in question protected in similar cases?
  • Similarity of marks: This should include meaning, phonetics, and appearance.
  • Litigiousness: Are you willing to actively monitor the trademark and take steps to protect it when necessary?

Attorneys should clarify how these factors affect their trademark opinion.

If you need help with a trademark clearance opinion letter, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.