Trademark Counseling & Clearance


Steptoe attorneys work with clients to educate their business teams about submitting new ideas for trademarks, slogans, and logos as early as possible in the clearance process, preferably before significant investment has been made in new branding elements.  We believe that it is imperative to research a potential new brand in order to understand its relative strength and potential position in the marketplace.  This is a vital step in formulating a coherent and cost-effective strategy to establish and protect IP assets. 
When a company invests in thorough brand research in the early stages of brand development, we have found that the prosecution and enforcement of that brand becomes far easier and much more cost-effective.  By becoming involved in the early stages of a branding project, we are able to advise clients on the current competitive landscape, how to select and position their brands, and how to protect those brands in order to maximize impact.

Our analysis occurs on many levels.  First, we analyze a mark to determine its inherent strength, based on the spectrum of distinctiveness.  Second, we analyze a mark to determine its relative strength, based upon what is already in existence on the marketplace.  Again, brands are not limited to trademarks.  They extend to every aspect of a customer’s experience, including websites, marketing materials, trade dress, as well as a mark’s ultimate presentation and appearance.


We tailor our search and clearance reports to meet clients’ needs and encourage the use of a customized trademark search form for all potential new marks.  This form gathers critical information from the ultimate business client in order to determine the importance of the proposed mark(s) to the overall portfolio and enables us to assess the client’s risk tolerance level.  The form can also be used to determine the level of clearance we should undertake for a particular brand, as well as the jurisdictions in which searches should be conducted. Based on the results, our team will conduct a series of searches to ensure the mark is available for use and registration. If necessary, we can also provide guidance regarding how to make a proposed mark more distinctive while minimizing changes to core branding elements.

We strongly believe that clearance of trademarks is one of the most important aspects of a trademark program.  Implementation of a clearance strategy that is customized to meet a client’s business needs will result in much greater efficiencies in the subsequent aspects of the portfolio management process, especially prosecution and enforcement.