The Importance of Conducting a Clearance Search

By David D. Rodrigues

When adopting a new name for a product or service, it is difficult to understate the importance of conducting a clearance search to determine whether the name of the product or service is available for use and registration. A comprehensive clearance search looks for confusingly similar variations of a proposed mark in the federal trademark registry, state trademark registries, common law uses, and online/website uses of similar marks. Regardless of whether a business plans to file a trademark application for a product or service, a clearance search should be considered part of the process when selecting a product/service name.

Although companies and businesses, and in particular smaller businesses, think the cost for a comprehensive clearance search is onerous and ultimately not worthwhile, those businesses should consider and understand that the costs associated with the risks of not conducting a search can greatly exceed the costs for conducting a comprehensive clearance.

Consider Taylor Swift’s current legal battle with a Long Island-based computer company. In 2018, Taylor Swift launched a software application named “The Swift Life.” The software application was meant to provide a platform which would allow fans of Taylor Swift to connect with the singer and allow for an interactive community.

However, in 2007 SwiftLife Computer Services (“Swiftlife Inc.”) filed a federal trademark application for the mark SWIFTLIFE covering “consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; design of homepages and websites; repair of computer software; repair of damaged computer programs” (Registration No. 3368913). This application registered in January 2008.

In 2018, Swiftlife Inc. filed a lawsuit against Taylor Swift alleging that the use of SWIFTLIFE with the aforementioned software application infringes SwiftLife’s registered trademark. Taylor Swift responded to the lawsuit by filing a motion to dismiss. However, the motion to dismiss was denied and Taylor Swift was forced to answer the lawsuit. As of the date of this article, the lawsuit remains pending.

It is unclear whether a search was conducted prior to the adoption and use of SWIFTLIFE. However, the SWIFTLIFE lawsuit highlights a risk that companies take when they do not conduct a comprehensive clearance search before using a new name for a product or service. A comprehensive search should find federal trademark registrations and common law uses of similar trademarks on similar goods/services and can act as a gauge to determine the availability of a mark with certain goods/services. By conducting a search, a business can make an educated decision regarding the risks associated with adopting or using a name or trademark. However, without conducting a clearance search, a business subjects itself to unknown risks and possible legal action by third parties.

Although there is a cost associated with a comprehensive search, which generally occurs at the beginning of a business cycle, businesses should consider the costs associated with the risks they are taking by not conducting the search. Responding to a cease and desist letter, answering a lawsuit, or the time and cost associated with rebranding a product/service are each undoubtedly more expensive than the cost for conducting a clearance search. As such, when selecting a new name for a product or service, it is good practice and can be more cost-effective in the long run to conduct a clearance search at the beginning of the product/service development cycle.