Trademark Clearance Search Checklist: From Knockout to Written Opinion

By Casey Scott McKay · 2025-02-18

This is the working document for clearing a trademark, in twelve phases from the intake call to the docketed file, with every step stated as an action you can tick off. It covers scoping the matter and fixing the identification of goods before a single query runs, testing protectability separately from availability, building the phonetic and translation variant set, running the knockout screen unfiltered by class, sweeping the common-law sources no federal database reaches, and writing a vendor search request that produces the coverage you actually bought. It then supplies the five-axis triage rubric that sorts references into fatal, negotiable, and noise, the categories of reference that must be investigated regardless of score, the international screen sequenced against the six-month Paris Convention window, and a section-by-section build order for the written opinion. Fee amounts, rule cites, form numbers, turnaround times, and the four exits available when the search finds something real are stated throughout. One matter runs the length of the document: Halden Health, Inc. clearing a sleep-gummy brand in seventeen days for roughly $16,450 against a $400,000 rebranding exposure. Deadlines, common mistakes, and the companion article, guide, and toolkits are collected at the end.

IP and Technology > Trademarks | Checklist | Published 18 February 2025 - Updated 19 December 2025 | Casey Scott McKay - marksy.us

Summary. This is the working document for clearing a trademark, in twelve phases from the intake call to the docketed file, with every step stated as an action you can tick off. It covers scoping the matter and fixing the identification of goods before a single query runs, testing protectability separately from availability, building the phonetic and translation variant set, running the knockout screen unfiltered by class, sweeping the common-law sources no federal database reaches, and writing a vendor search request that produces the coverage you actually bought. It then supplies the five-axis triage rubric that sorts references into fatal, negotiable, and noise, the categories of reference that must be investigated regardless of score, the international screen sequenced against the six-month Paris Convention window, and a section-by-section build order for the written opinion. Fee amounts, rule cites, form numbers, turnaround times, and the four exits available when the search finds something real are stated throughout. One matter runs the length of the document: Halden Health, Inc. clearing a sleep-gummy brand in seventeen days for roughly $16,450 against a $400,000 rebranding exposure. Deadlines, common mistakes, and the companion article, guide, and toolkits are collected at the end.

Keywords: trademark clearance checklist · knockout search · comprehensive trademark search · common-law sweep · use investigation · clearance opinion · availability opinion · hit triage · variant set · uspto trademark search · tsdr file history · ttabvue · state trademark registers · coordinated classes · paris convention priority · coexistence agreement · letter of protest · constructive use priority · section 2d refusal · search caveats

What this checklist is for

Work it top to bottom and you will have cleared a mark: a defensible search record, a triaged set of references, an opinion a court could read in 2029, and a filed application. It is the operational distillation of two companion documents — the doctrine is in Trademark Clearance Searching: What a Knockout Search Can and Cannot Tell You, and the reasoning behind each step, with model language, is in Running a Full Trademark Clearance Search. Nothing here re-teaches likelihood of confusion. It tells you what to do and in what order.

Who should use it. Trademark counsel and the paralegals who run the searches; in-house counsel supervising outside firms; founders and brand leads who want to know what they are buying. Solo and small-firm practitioners running the whole matter alone will find the sequencing and the cost lines in The Solo and Small Firm IP Practice Toolkit.

What you need before you start. The exact spelling and pronunciation of every candidate; a draft identification of goods or services in ID Manual language; the client's trade channels, price points, and buyer type, named specifically; a written rebranding-cost estimate; the client's list of competitors; a conflicts check; a signed engagement letter whose scope paragraph says what the search covers and what it does not; and a budget authority who can approve $500 to $2,500 of vendor spend the same day.

The worked example. Halden Health, Inc., a Seattle supplement company, is clearing a new brand for magnesium-glycinate sleep gummies — fourteen SKUs, natural-grocery retail plus Amazon, $28 to $34 a bottle, printed folding cartons on a nine-week lead time. It cleared its last name in forty minutes and paid $365,700 to unwind it. Rebranding again would cost north of $400,000. The matter runs seventeen calendar days and about $16,450, of which $2,650 is vendor spend. Its progress appears at the foot of each phase.

| Phase | What it produces | Typical time | Typical cost | |---|---|---|---| | 1. Scope the matter | Intake sheet, ID, tier, conflicts clear, engagement scope | 45–90 min | $400–$700 | | 2. Test protectability | Candidates killed before any search runs | 20 min each | $150–$300 | | 3. Build the variant set | 12–20 strings per candidate, in a tracked sheet | 30–45 min each | $150–$250 | | 4. Knockout screen | Reliable kills; survivors identified | 2 hrs each | $350–$600 | | 5. Common-law sweep | State, marketplace, domain, and trade-press hits | 2–3 hrs each | $600–$900 | | 6. Order the full search | Vendor report(s) with documented strategy | 2 business days | $500–$1,200 each | | 7. Read the report | 10–30 tagged references plus a field count | 3–8 attorney hrs | $1,200–$2,500 | | 8. Triage | Fatal / negotiable / noise, scored and recorded | 1–2 hrs | $400–$800 | | 9. Investigate | Market facts the register cannot supply | 3–7 business days | $600–$2,500 each | | 10. International screen | Country list, priority calendar, local counsel | 1–2 hrs + vendor | $300–$900 per country | | 11. Choose the exit | Adopt, negotiate, attack, buy, or kill | 1 call | — | | 12. Opinion, filing, docket | Signed opinion; application filed; dates docketed | 5–9 attorney hrs | $3,500–$6,000 |

Phase 1 — Scope the matter, fix the goods, set the tier

[ ] Run the conflicts check on the client, every candidate mark, and every competitor the client names — before you read anything.
- Why. If a pertinent reference belongs to another client of the firm you may be barred from opining on it. Discovering that after you have formed a view is worse than discovering it on day one.
- Trap. Conflicts run only on the client's name miss the problem entirely. The conflict lives in the reference owner, whose identity you do not yet know — so re-run conflicts after Phase 7, when you do.
[ ] Send an engagement letter whose scope paragraph states the mark, the goods, the countries covered, and the sources that will and will not be searched.
- Why. Scope creep in clearance is silent. A client who thinks it bought a logo search and got a word search will say so in a deposition.
[ ] Capture the designation in writing: exact spelling, capitalization, phonetic pronunciation, standard characters or stylized, whether it will ever appear without the house mark, its meaning in every language the client's customers speak, whether it reads as a surname or a place, and who created it.
- Authority. Standard-character registrations are not limited to any particular display. In re Viterra Inc., 671 F.3d 1358, 1363 (Fed. Cir. 2012); TMEP § 1207.01(c)(iii).
- Trap. "It will always run with the house mark" is a promise marketing did not make. Get it from someone senior enough to bind marketing, or clear the standalone mark.
[ ] Draft the identification of goods or services now, in ID Manual language, and treat it as fixed for the rest of the matter.
- Why. The ID is half the analysis and the half you control. Every downstream step is a function of the designation and the identification, and nothing else. See Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist.
- Authority. At the USPTO, relatedness is judged on the identification as written, not on what the owner actually sells. Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 942 (Fed. Cir. 1990).
[ ] Record trade channels by name, price points, buyer type, current territory, and planned territory in twenty-four months.
- Why. Channels and purchasing conditions are DuPont factors three and four and are not searchable. If you do not write them down at intake you will invent them in the opinion.
[ ] Get the rebranding cost in writing, itemized: destroyed packaging, lost marketplace revenue, written-off media, domain replacement, legal.
[ ] Set the tier from that number and say it out loud to the client.
- Under $25,000 — screen only, document the stopping point. $25,000 to $250,000 — screen, then one full search on the survivor, investigation on close references, oral or short-form opinion. Above $250,000, or the mark is the company name — full search, design search if the logo carries equity, investigations on every meaningful reference, full written opinion, foreign searches for any launch inside twenty-four months.
[ ] Ask whether the client wants registration, use, or both — and note the answer in the file.
- Why. They are different questions with different answers. A reference can be harmless in the market and fatal at the Trademark Office.

Halden, Monday 3 February. Intake call at 9:00 a.m., conflicts cleared by 10:30. Six candidates from the branding agency: SOMNOLA, DUSKWELL, VESPERINE, QUIET HOUR, NYMBUS, HALDEN REST. Identification drafted the same morning: "dietary and nutritional supplements in gummy form for promoting sleep" — International Class 5. Deliberately narrower than the "dietary supplements" a hurried filer would submit, because the narrowing shrinks the set of references whose goods are identical as identified, and it is the sentence the opinion will defend. Tier: above $250,000. Cost: $650.

Phase 2 — Test protectability before you test availability

[ ] Place each candidate on the distinctiveness spectrum and kill anything descriptive or generic for the goods before spending a dollar on searching.
- Why. A mark can be gloriously available and still worthless. Learning that during clearance costs an hour; learning it in an office action costs a year. See Choosing a Strong Trademark and the Distinctiveness and Genericness Toolkit.
- Authority. 15 U.S.C. § 1052(e)(1); TMEP § 1209.01.
- Trap. "It's descriptive, so nobody can own it, so we don't need to search" is the reasoning that produced an eight-figure judgment in Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992). Descriptive terms acquire secondary meaning, the Office registers marks a skeptic would call descriptive, and those registrations carry the presumptions of 15 U.S.C. § 1115(a). Search descriptive terms.
[ ] Screen each candidate against the § 2 statutory bars: primarily merely a surname, primarily geographically descriptive or deceptively misdescriptive, deceptive, and the name or likeness of a living individual without written consent.
- Authority. 15 U.S.C. § 1052(a), (c), (e)(2)–(4); TMEP §§ 1203, 1206, 1210, 1211. Background in The Section 2 Bars; the arguments out are in Overcoming a Section 2 Refusal.
[ ] Confirm the goods are in lawful use in commerce if the client operates in a regulated category — cannabis, hemp-derived cannabinoids, kratom, vape, alcohol, firearms, or dietary supplements.
- Why. No search report raises legality. A mark can be perfectly clear and still unregistrable. See The Lawful Use Requirement, the Regulated-Industry Trademark Filing Checklist, and for cannabis-adjacent goods, Registering a Cannabis-Adjacent Trademark.
[ ] Separate house-mark extensions from standalone marks and route them to the cheaper workflow.
[ ] Note whether the client's equity will live in a word, a logo, a package shape, a color, or a sound, and flag the non-word elements for a separate search in Phase 6.
- Why. A word search clears a word. See Trade Dress and the Functionality Doctrine and Color, Sound, Scent, and Motion.
[ ] Write a two-line memo for every candidate killed at this phase and keep it.
- Why. A file showing candidates eliminated before anyone bought a search is the cheapest available proof that the process was real.

Halden. Two die here. QUIET HOUR is descriptive to the point of genericness for a sleep product and would need acquired distinctiveness to reach the Principal Register. HALDEN REST is a house-mark extension and goes to the short workflow. Four candidates go to search. Supplements carry a parallel FDA labeling review that never touches the trademark file.

Phase 3 — Build the variant set before you search anything

[ ] Open a spreadsheet with one row per string and one column per source, and date-stamp each cell as you run it.
- Why. That sheet becomes the "Scope of Search" section of the opinion, survives the paralegal leaving, and is the only artifact that answers "did you search for X?" three years later without guessing.
[ ] Write out the exact and legal equivalents: singular, plural, possessive, spaced, hyphenated, and standard-character forms.
[ ] Say the mark aloud and write every spelling that produces the sound, working the standard consonant swaps (c/k/q/ck/ch, s/z, f/ph, i/y, x/cks), vowel substitutions, and doubled letters.
- Authority. Similarity is judged on appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); TMEP § 1207.01(b).
[ ] Truncate the distinctive formative in both directions with wildcards — dusk*, *well, dusk?el*.
[ ] Translate and transliterate from every language an appreciable segment of the client's customers speaks; always include Spanish and French.
- Authority. Doctrine of foreign equivalents. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005); TMEP § 1207.01(b)(vi).
[ ] Add semantic equivalents — synonyms producing the same commercial impression.
[ ] Add the prefix and suffix families common in the client's field.
- Why. In Class 5, the -ine, -ex, -ol, and -vit endings are so crowded that a shared suffix carries almost no weight. You must search the field to be entitled to say so.
[ ] Cap the set at twelve to twenty strings per candidate.
- Trap. Beyond twenty you are generating noise a paralegal will bill you to discard, and volume in the sheet is not the same thing as coverage.

Halden, Tuesday 4 February. Sixteen strings for DUSKWELL, eighteen for VESPERINE. VESPERINE means evening prayer in ecclesiastical Latin and is a near-cognate in three Romance languages — recorded as both a connotation risk and, later, a suggestiveness argument.

Phase 4 — Run the knockout screen

[ ] Run every string against the USPTO Trademark Search system in expert mode with no class filter, including dead records.
- Why. Confusion turns on relatedness of goods, not class number. Filtering by class is the single most common way a founder manufactures a false clean. See The Nice Classification System.
- Trap. The tool that replaced TESS on 30 November 2023 is faster and runs wildcards and proximity operators in expert mode — and still will not surface KWIKSTOP for QUICK STOP on a default query. Truncate first, then narrow with field tags.
[ ] Re-run the top hits through an index that carries ownership, assignment chains, and TTAB history alongside the register — Marksy, or USPTO Assignment Search plus TTABVUE by hand.
- Why. The register answers "what is registered." It does not answer who owns it now, what else they own, or whether they fight.
[ ] Search the open internet hard: quoted phrase; mark plus product noun; mark plus "brand," "LLC," and the category word; reverse image search; then site-restricted searches against the retailers the client named.
[ ] Search the commerce layer: Amazon, Walmart Marketplace, Target, Etsy, eBay, the category retailers, and both app stores if the mark will ever be an app.
- Why. These are common-law uses with real first-use dates that appear in no register.
[ ] Check domain availability and WHOIS on the exact-match .com and the obvious alternates, plus handles on Instagram, TikTok, X, YouTube, and LinkedIn.
- Trap. An available domain clears nothing and a taken one proves nothing. Treat the WHOIS creation date as the useful datum; registrant identity is usually behind a privacy proxy. When the domain itself is the problem, see Cybersquatting and the ACPA and the Online Brand Protection Toolkit.
[ ] Kill the candidate on any one of these four findings, and only these four: a live federal registration or application for a legally identical mark covering goods inside the four corners of your intended ID; a live registration for a phonetic equivalent on goods in the same aisle; an operating business anywhere selling the same product under the same name with an evident head start; or a famous mark of which the candidate is a near-equivalent, regardless of goods.
- Why. A knockout screen produces reliable no's and unreliable yeses. Use it for the no's. Anything short of the four findings is a question for the full search, not an answer.
[ ] Write a one-paragraph screening memo for each candidate killed, and keep it in the matter file.
[ ] Watch the arithmetic before screening a sixth candidate.
- Why. Ninety minutes of paralegal time plus thirty of attorney review per candidate means five candidates cost more than one comprehensive search — and you still have no common-law report. Screen many only when you genuinely have many.

Halden, Tuesday 4 February. SOMNOLA dies on a live Principal Register registration for legally identical goods. NYMBUS dies on different grounds: a bank-technology company owns it across financial software with eleven registrations, a family of marks, and a visible enforcement record. Nothing to do with supplements — but the owner posture is a fight nobody at Halden wants to fund, and the screen is where that judgment is cheapest. DUSKWELL and VESPERINE survive. Cost for the day, including Phase 3: $2,100.

Phase 5 — Sweep the common law

[ ] Search the trademark register of every state the client already sells in, plus its top ten target markets, through each Secretary of State.
- Why. U.S. rights arise from use, not registration. A company selling since 2011 that never filed federally owns enforceable rights in its trade territory and appears in the USPTO database nowhere. See Where Your Trademark Rights End and Establishing and Proving Common-Law Trademark Rights.
[ ] Search corporate registries and county fictitious-business-name indexes in the same markets for trade names and d/b/a's.
[ ] Pull the Wayback Machine snapshot history for any domain that matters, to establish when a use started and whether it stopped.
[ ] Search category trade press, industry directories, trade-show exhibitor lists, and any category-specific product database.
- Why. Regional and B2B users are invisible to consumer search and to the register both.
[ ] Run party-name searches in TTABVUE and PACER on every owner you have identified so far.
[ ] Screenshot every common-law hit with a visible date and file it by candidate.
- Why. What a claimant would have to prove to beat you is set out in the Common-Law Priority Evidence Checklist. Your screenshots are the first draft of that record, taken before anyone is adverse.
[ ] Do this sweep even though the vendor will cover some of it in Phase 6.
- Why. You will read the vendor's common-law section far better already knowing what is out there, and you may kill a candidate before spending $900.

Halden, Wednesday 5 February. DUSKWELL turns up an Oregon state registration for wellness-consultation services held by a sole proprietor, an Etsy seller of lavender sachets, and duskwell.com — created 2019, privacy-shielded, parked. VESPERINE turns up a dormant Instagram handle with four posts from 2021. Nothing kills a candidate; everything goes into the file with dates. Cost: $1,400.

Phase 6 — Order the comprehensive search

[ ] Write the search request in full sentences and keep a copy in the matter file.
- Why. The order form is a legal document. Vendors are proficient; the recurring failure is a miscommunicated request producing a report with a gap you will not find until you read the algorithm strings at the head of each section.
[ ] Specify the mark, the exact identification, and the class — then instruct the vendor not to limit the Federal section by class, and name the coordinated and adjacent classes to add.
[ ] Specify the sections: Federal (live and dead), State registrations and trade names for all fifty states and D.C., Common Law, Business Names, Domain Names, and Internet.
[ ] List the variations you want covered by name — phonetic equivalents, alternate spellings, truncations of each formative, and translations from each named language — and list the specific strings you most care about.
[ ] State your exclusions explicitly (for example, references where the formative appears solely as a personal surname in a business name with no evident trademark use).
[ ] Ask the vendor to confirm the effective date of the federal file used for the report.
- Why. That date, not the report date, is the honest measure of what the instrument could see. It goes in the opinion.
[ ] Order the second-choice name at the same time.
- Why. A parallel search costs roughly $900. Learning on day eleven that name one is dead and restarting the vendor cycle costs two weeks of schedule.
[ ] Add a design search ($500–$1,500) if equity will live in a symbol — and note in your file that most vendors limit design searching to USPTO records, so it will not disclose common-law logo use.
- Why. That gap must be disclosed in the opinion. See Protecting Trade Dress, the Trade Dress Protection Checklist, and for marks with no spelling at all, Registering a Non-Traditional Mark.
[ ] Add a dilution search ($300–$800) if the candidate is coined and destined to be a house mark.
- Why. It answers two questions at once: is a famous mark lurking, and is your "distinctive" coinage already used by forty companies in unrelated fields. See Trademark Dilution Under the TDRA.
[ ] Choose the turnaround deliberately. Standard is two business days at $500–$1,200; four-hour service can run two to three times standard.

Halden, Thursday 6 February. Both full U.S. searches ordered, standard turnaround, $1,750 for the pair. Reports land Monday 10 February with a federal effective date of 15 January — twenty-six days of blind spot, and the number that ends up deciding the matter.

Phase 7 — Read the report

[ ] Read the vendor's search algorithms at the head of each section first, against your written request.
- Trap. If you asked for Spanish translations and the algorithm string does not show them, you have a gap. Fix it now with a supplemental search, not later in the caveat sheet, where it protects nobody.
[ ] Record the effective date of the federal file at the top of your working notes.
[ ] Tag on a single pass, generously, without evaluating: anything similar in sight, sound, structure, or meaning; anything owned by a named competitor; anything that might be famous.
- Why. Tagging and judging are different operations, and mixing them makes you slow and inconsistent.
[ ] Count the field before analyzing any single reference: how many references share the formative, in which classes, how many disclaim it, how many sit on the Supplemental Register.
- Authority. Extensive third-party use of similar marks shows a mark is relatively weak and entitled to a narrow scope. Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1338–39 (Fed. Cir. 2015); Jack Wolfskin Ausrüstung Für Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373–74 (Fed. Cir. 2015).
[ ] Pull TSDR file histories on every surviving federal reference: filing basis, specimen, disclaimers, whether it registered under § 2(f) or on the Supplemental Register, § 8 and § 15 filings, every extension request and its stated reason, and the assignment chain.
- Why. Ten minutes each, and it is where most of the real information lives. A Supplemental Register reference under 15 U.S.C. § 1091 means the Office thought the mark descriptive — usually a weaker obstacle. A § 2(f) registration means the owner proved acquired distinctiveness with years and money behind it. See From Descriptive to Distinctive.
[ ] Check TTABVUE and PACER on every high-tag owner.
- Why. An owner with six oppositions is a different risk from an owner with none, holding mark and goods constant.
[ ] Read the Common Law, Business Names, and Internet sections with the same care as the Federal section.
- Trap. The Federal section leads because federal registrants have spent money and hold the presumptions of 15 U.S.C. § 1115(a). The reference that ends a launch is as likely to sit four hundred pages in with no reference number worth quoting.

Halden, Monday 10 February. The DUSKWELL report yields forty-one federal references with a DUSK- formative across Classes 3, 5, 20, and 35 — a genuinely crowded field, and the paragraph that will let counsel say "distinguishable" rather than merely hope so. Four references tag above noise.

Phase 8 — Triage: score, bin, override

[ ] Score every tagged reference 0–3 on five axes and record the scores in the sheet.

| Axis | 0 | 1 | 2 | 3 | |---|---|---|---|---| | A. Mark proximity | Shares only a disclaimed, generic, or heavily diluted element | Shares a distinctive element; dominant portions differ | Phonetic, connotative, or translation near-equivalent | Identical or legally identical | | B. Goods proximity | Unrelated; different aisle, different buyer | Same broad sector, different function | Complementary, commonly single-sourced, or same shelf and channel | Identical, or encompassed by the reference's identification as written | | C. Rights quality | No enforceable rights evident: dead, abandoned ITU, no use found | Common-law or state registration only | Live Principal Register registration | Incontestable under § 1065, or § 2(f), or famous, or a family of marks | | D. Owner posture | Defunct, unrepresented, no enforcement footprint | Operating; no enforcement record | Represented; some C&Ds or TTAB activity | Serial enforcer, direct competitor, or funded litigant | | E. Client exposure | Digital-only; reversible in a week | Limited print or inventory | House mark or major launch; national retail | The mark is the company name, or relabeling requires a regulated artwork cycle |

[ ] Bin the totals: 11–15 Fatal, 6–10 Negotiable, 0–5 Noise.
[ ] Apply the three override-up rules, any one of which makes a reference Fatal regardless of score: the mark is legally identical and your goods fall inside the reference's identification as written; the reference is famous within 15 U.S.C. § 1125(c)(2)(A) and the candidate is a near-equivalent; or the owner is a company the client named as a competitor.
- Authority. Octocom, 918 F.2d at 942, forecloses the "but they only really sell X" argument at the Office, which is why the identification-as-written override exists.
[ ] Apply the single override-down rule only where investigation has established three consecutive years of non-use with no evidence of intent to resume and no residual goodwill — then drop two bands.
- Authority. 15 U.S.C. § 1127 (three years' nonuse is prima facie abandonment); § 1064(3) (abandonment pleadable at any time). See Use It or Lose It and Proving and Defeating Trademark Abandonment.
- Trap. The presumption is rebuttable, and the drop is conditional on the client funding the fight. Do not drop a band the client has not agreed to pay for.
[ ] Score every pending intent-to-use application as though the owner will use the mark and the application will register, then adjust down for age and extension history.
- Authority. Registration confers nationwide priority as of the filing date. 15 U.S.C. § 1057(c). See Intent-to-Use Applications.
[ ] Score axis C at 0 for a cancelled registration or abandoned application only after you have looked at why it died.
- Trap. Registrations lapse for docketing failures, budget cuts, and unanswered office actions, not only for abandonment. Give particular weight to use-based filings that went dead: those marks were, by definition, in use at some point.
[ ] Write the crowded-field conclusion in two halves and say both to the client.
- Why. Thirty references sharing your formative means each is weak and small differences distinguish — and that your mark will be equally weak, and you will spend a decade watching competitors adopt names you cannot stop.

Halden, Monday 10 – Tuesday 11 February.

| Ref | Mark / status | Goods | A | B | C | D | E | Total | Bin | |---|---|---|---|---|---|---|---|---|---| | F-07 | DUSKWELL FARMS, live Principal Reg. | Culinary herbs (Cl. 29, 31) | 2 | 1 | 2 | 1 | 2 | 8 | Negotiable | | F-14 | DUSQUEL, Supplemental Reg. | Herbal supplements (Cl. 5) | 2 | 3 | 1 | 1 | 2 | 9 | Negotiable | | F-22 | DUSKWELL, cancelled Reg. (§ 8) | Herbal teas (Cl. 30) | 3 | 1 | 0 | 0 | 2 | 6 | Negotiable | | F-31 | DUSK & WELL, pending ITU | Bath oils, soaps (Cl. 3) | 2 | 1 | 1 | 1 | 2 | 7 | Negotiable |

Nothing fatal on paper. Three need investigation — and the one everybody would be tempted to skip is F-22, a cancelled registration for herbal teas, scored 6, sitting at the bottom of the pile.

Phase 9 — Order the use investigations

[ ] Build the investigation list from categories, not from your ranking of scariness: every cancelled or abandoned use-based filing near your goods; every Supplemental Register reference on identical goods; every state or common-law reference in a market the client will enter; every reference whose owner you cannot identify from public records.
- Why. Everybody investigates the frightening reference. The one that ends a launch is usually the one that looked resolved.
[ ] Instruct the investigator in writing to determine, for each subject: whether any product bearing the mark is currently offered and at what price and package size; the channels and approximate door count; the earliest documentable date of use and its source; whether use has been continuous; any indication of planned expansion into the client's goods; and the entity's corporate status.
[ ] Instruct the investigator to purchase one unit through ordinary retail or e-commerce channels and retain the packaging, receipt, and shipping documentation.
- Authority. Buying as an ordinary consumer without pretext is the recognized safe harbor. Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119, 122–24 (S.D.N.Y. 1999); Apple Corps Ltd. v. International Collectors Society, 15 F. Supp. 2d 456, 475–76 (D.N.J. 1998).
[ ] Write the constraints paragraph into every instruction: identify yourself truthfully if asked; do not state or imply that you represent any party; do not contact counsel, officers, or in-house legal; make no pretextual statement of purpose; stop and call if anyone indicates the company is represented in a trademark matter; report facts only.
- Authority. Model Rules of Prof'l Conduct r. 4.1(a), r. 4.2, r. 5.3, r. 8.4(c). The rules that bind you bind everyone acting at your direction.
- Trap. Jurisdictions diverge sharply on investigator pretext, and at least one state supreme court has held there is no investigatory exception at all for lawyers. In re Gatti, 8 P.3d 966, 976 (Or. 2000). Check your own state before you send the instruction.
[ ] Assume the investigator's report is discoverable and instruct accordingly.
- Why. Facts an investigator gathers are not privileged, and a clearance investigation is ordinarily not conducted in anticipation of litigation, so work-product protection under Fed. R. Civ. P. 26(b)(3)(A) usually does not attach.
[ ] Budget for two investigations, not one, and three to seven business days each.
- Trap. Investigations do not compress. Everything else in this checklist does. If there is no time for one, that fact belongs in the opinion in those words.
[ ] Re-score every investigated reference and record the new total next to the old one.

Halden, Friday 14 February. F-14 (DUSQUEL): the owner was administratively dissolved in Puerto Rico in 2022, the site has been offline since October 2022, no product at three retailers or on any marketplace. Axis C drops to 0; override-down applies; DUSQUEL is a cancellation candidate, not an obstacle. F-31 (DUSK & WELL): a small Brooklyn bath-products operation with no interest in ingestibles; resolvable by consent. F-22 (DUSKWELL): Thistlebee Tea Co. still sells DUSKWELL nighttime tea through its own site and roughly 340 natural-grocery doors; the registration lapsed in 2021 because nobody docketed the § 8; in November it launched DUSKWELL sleep gummies; and on 22 January it filed a new use-based application in Class 5 — seven days after the effective date of the federal file underlying Halden's report. Rescored A=3, B=3, C=1, D=1, E=2 — 10, and Fatal under override-up rule (1) once the application registers. Kill DUSKWELL. Not because Halden would certainly lose, but because it would certainly fight, and there is a second name.

Phase 10 — Run the international screen

[ ] List every country the client will launch in within twenty-four months, and every country where it will manufacture, warehouse, or sell through a marketplace that ships there.
- Why. Rights are territorial. A U.S. search clears the United States and nothing else.
[ ] Screen each country's national register directly, and screen the WIPO Global Brand Database and TMview for international registrations designating those countries.
[ ] Identify first-to-file jurisdictions on the list and treat them as urgent.
- Trap. In a first-to-file country, a clean search plus a slow filing is how a distributor or a squatter acquires your brand lawfully. Priority there is a filing date, not a use date.
[ ] Calendar the six-month Paris Convention priority window from the earliest home-country filing and decide, in writing, which countries will be claimed within it.
- Authority. 15 U.S.C. § 1126(d); Paris Convention art. 4. The same six-month window is the structural blind spot in the U.S. search — an applicant can file here up to six months after its home filing and take the earlier date.
[ ] Decide the filing vehicle: Madrid Protocol international application based on the U.S. application or registration, or direct national filings.
- Why. Madrid is cheaper across many countries and carries central-attack exposure for five years. See The Madrid Protocol: How International Registration Works, Filing an International Trademark via the Madrid Protocol, Designating Countries Under the Madrid System, and the Madrid Protocol Application Checklist.
[ ] Engage local counsel for a meaning and connotation check in each target market, separately from the availability search.
- Why. A search tells you nobody owns the word. It does not tell you the word is vulgar, non-distinctive, or unpronounceable in the market. That is a phone call, not a database.
[ ] Budget $300 to $900 per country for a screening-level search and add the results to the same tracking sheet.
[ ] State in the opinion which countries were screened, at what depth, and which were not.
- Why. Sequencing, cost, and country-by-country strategy are in the International Trademark Toolkit.

Halden. Canada and the United Kingdom inside twenty-four months; the EU is a phase-three question. Screening searches ordered in both; a Madrid application designating CA and GB is calendared to file within six months of the U.S. filing date, which keeps the Paris priority claim available.

Phase 11 — Choose the exit

[ ] Run the surviving reference through four questions, in this order, and record the answer to each.
[ ] Dead in fact? Proceed on a documented non-use record and consider clearing the register.
- Authority. 15 U.S.C. § 1064(3); TBMP § 309. See Filing a Petition for Cancellation and the TTAB Practice Toolkit.
[ ] A risk to registration only, not to use? Consider using the mark for twelve to twenty-four months without filing, then filing with a coexistence record.
- Trap. That path forfeits constructive-use priority under 15 U.S.C. § 1057(c) for the whole period and risks being beaten to the Office by someone you have never heard of. Decide it deliberately; do not drift into it. See Responding to a §2(d) Likelihood-of-Confusion Refusal.
[ ] Owner reachable and uninterested in your lane? Negotiate consent or coexistence before launch.
- Why. Before launch you are asking for something; after launch you are being extracted from something. Start from the Trademark Coexistence Agreement — Template, and note that a consent agreement carries real weight with an examining attorney under TMEP § 1207.01(d)(viii).
[ ] Get the client's written agreement to walk away from the name if consent is refused, before you approach anyone.
- Trap. Asking, being refused, and proceeding anyway converts an arguable case into a documented one.
[ ] None of the above? Kill the name, or buy the reference — with its goodwill.
- Trap. An assignment in gross destroys the rights you paid for, and an uncontrolled license-back is a naked license. See Trademarks in the Deal, Naked Licensing, and the Trademark Assignment Agreement — Template.
[ ] Consider a letter of protest against a pending reference that is clearly refusable on public grounds.
- Authority. 37 C.F.R. § 2.149; TMEP § 1715. The fee is $50, set by 37 C.F.R. § 2.6. It must be filed before publication or within thirty days after publication, and it puts evidence in front of the examining attorney without opening a proceeding.

Halden, Friday 14 February. DUSKWELL withdrawn on the call. VESPERINE proceeds to opinion with one moderate reference — VESPERA, a Principal Register registration for non-medicated skin-care preparations owned by a company selling through medical-spa channels at $90 and up.

Phase 12 — Write the opinion, file, and docket

[ ] Build the opinion in this order: privilege legend → scope → summary conclusion → field description → pertinent references → risk assessment → risk rating → recommendations → assumptions → caveat exhibit → conflicts disclosure.
[ ] Stamp it PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION, name the permitted recipients, and do not stamp it "Attorney Work Product."
- Authority. It is a privileged communication under Upjohn Co. v. United States, 449 U.S. 383, 389–90 (1981). Calling it something it is not invites a fight you will lose, and over-designating teaches a magistrate judge to discount all your designations.
[ ] Put the vendor's federal effective date and a sentence beginning "We have not searched…" into the scope paragraph.
- Why. Those two sentences state the resolution of the instrument, which is what a caveat is actually for.
[ ] Give the summary conclusion in three sentences or fewer on page one, in one of four honest shapes: clear; clear for use but qualified for registration; adverse; or incomplete pending investigation.
- Trap. Ask before drafting whether the client accepts negative opinions in writing. Some want one precisely because it is the only thing that stops a marketing team already in love with a name. Others will not have one in the file at any price.
[ ] Label every context-only reference as context-only, in terms, and state that you do not regard any of them as presenting a risk.
- Why. An unflagged list of sixty-three marks, read adversarially in three years, becomes sixty-three problems counsel identified and the client ignored.
[ ] For each pertinent reference give mark, status and register, filing and registration dates, goods as identified, owner, report reference number, and reasons a stranger can check.
- Authority. Do not march through all thirteen DuPont factors for a reference that fails on goods alone. Not every factor is relevant and any one may control. In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). Padding is not evidence of care.
[ ] Rate use and registration separately — Clear, Low, Moderate, Elevated, or Adverse.
- Why. They are different questions with different answers surprisingly often, and a client who hears one number assumes it covers both.
[ ] Write recommendations that tell the client what to file, what identification to use, what marketing claims to avoid, and for how long — and state which of them are premises of the conclusion rather than suggestions.
- Why. The single most valuable and most often omitted sentence in a clearance opinion is the one that says use this identification and no other. The search taught you how to frame the application; use it.
[ ] State assumptions as conditions and attach a caveat exhibit covering database currency, vendor selection subjectivity, unsearched common-law users, foreign-priority and Madrid filings that may claim earlier dates, fame that cannot be assessed from a search report, and unsearched design elements.
[ ] Disclose any reference owned by another client of the firm, and say the client will need separate counsel to assess it.
[ ] File the application within ten business days of the opinion.
- Authority. Constructive-use priority runs from the filing date, not registration and not first use. 15 U.S.C. § 1057(c). The base application fee is $350 per class, with a $100-per-class surcharge where required information is omitted and $200 per class where the identification is typed into the free-form text box rather than selected from the ID Manual. Fees are set by rule and change; confirm at 37 C.F.R. § 2.6 before quoting a client. Then work Pre-Filing Trademark Application Checklist and the Trademark Application and Prosecution Toolkit.
[ ] Place the mark and its formative on a watch service in the filing class and its coordinated classes, effective on filing.
- Why. Clearance is a snapshot; watching is the film. See Trademark Watch Services: What to Monitor.
[ ] Docket the three-month office action window, the publication and opposition dates, any statement-of-use clock, and the § 8 and § 9 dates.
- Why. The registration cancelled for a missed § 8 becomes, five years later, somebody else's confusing search hit — which is exactly what F-22 was. See Docketing Deadlines, What Happens After You File, and The 3-Month Office Action Deadline.
[ ] Move the client's internal discussion out of chat and into email addressed to counsel.
- Trap. The Slack thread in which the head of brand writes "yeah I saw that one, probably fine, let's just go" is Exhibit 12, and no legend saves it.
[ ] Decide the waiver question at delivery, not later.
- Authority. Relying on advice of counsel means producing the advice; the privilege cannot be shield and sword. Waiver reaches the same subject matter, with Fed. R. Evid. 502(a) as the practical brake. There is no Lanham Act analogue to 35 U.S.C. § 298, so trademark defendants have no statutory protection against an adverse inference from the absence of an opinion.
[ ] Close the file with the killed-candidate memos, the tracking sheet, the vendor reports, the investigator reports, and the signed opinion — and keep the memos for the names you rejected.

Halden, Tuesday 18 – Wednesday 19 February. Written opinion on VESPERINE issued: clear for use, moderate for registration, with a predicted § 2(d) citation to VESPERA and a budgeted office action response. Recommendations fix the identification, bar skin and complexion claims for eighteen months, and require the HALDEN house mark on primary packaging where feasible. Application filed 19 February in Class 5. Seventeen calendar days, twelve business days, $16,450 all in — about four cents on the dollar of a $400,000 downside, and it bought the discovery of a 22 January application no report on Earth could have shown on the day it was ordered.

Common Mistakes

Filtering the knockout search by class. Classes are a filing convenience. Confusion turns on relatedness of goods, and marks in different classes conflict constantly.
Treating a clean free search as the record. A screenshot in a folder named "Legal" is worse than nothing, because it looks like diligence that was never performed. If the decision is "we accept the risk on a screening search," write that sentence down and say why.
Ignoring cancelled registrations and abandoned applications. They lapse for docketing failures and budget cuts. A cancelled use-based registration was, by definition, in use at some point. The Halden matter turned on exactly one of these.
Skipping the investigation. No report tells you whether a mark is in use, where, since when, at what price, to which buyer. Those are five DuPont factors and none of them is searchable.
Assuming the small owner can be ignored. A small senior user has one asset, will fight for it, and can extract enormous leverage from an injunction motion timed to your launch — and may have a reverse-confusion claim. Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 474–75 (3d Cir. 1994).
Not searching a term you think is descriptive. See Sands, Taylor & Wood. Both premises of that reasoning can be wrong, and a fair-use defense is something you assert after being sued.
Ordering a full search on the wrong sentence. A search run against a fuzzy identification is not a cheap search; it is a worthless one.
Letting the mark change after the opinion. VESPERINE becomes VESPERINE PM, or the lockup gains a word, and the search no longer covers the mark. Re-screen — usually an hour.
Ignoring counsel's own recommendation. A search that was merely incomplete is not bad faith. A limit you were told about and chose to ignore is evidence. Compare SecuraComm Consulting Inc. v. Securacom Inc., 166 F.3d 182, 188–89 (3d Cir. 1999), and Star Industries, Inc. v. Bacardi & Co., 412 F.3d 373, 388 (2d Cir. 2005), with International Star Class Yacht Racing Ass'n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753–54 (2d Cir. 1996).
Clearing the word and shipping the logo. Word searches do not clear designs, and most design searches are federal-only.
Clearing the United States and launching in five countries. Rights are territorial, and half the world is first-to-file.

Deadlines at a Glance

| Event | Deadline | Authority | |---|---|---| | Foreign priority claim in the U.S. | 6 months from the first foreign application | 15 U.S.C. § 1126(d); Paris Conv. art. 4 | | Vendor full U.S. search | 2 business days standard; 4-hour available at 2–3× | Vendor terms | | Use investigation | 3–7 business days; does not compress | Investigator terms | | Response to a non-final or final office action | 3 months from issue date; one 3-month extension on request and fee | 37 C.F.R. § 2.62(a); fee at § 2.6 | | Response in a § 66(a) Madrid-based application | 6 months; no extension available | 37 C.F.R. § 2.62(a)(1) | | Letter of protest | Before publication, or within 30 days after publication; $50 | 37 C.F.R. §§ 2.149, 2.6 | | Notice of opposition | 30 days from publication, extendable on request | 15 U.S.C. § 1063(a); 37 C.F.R. § 2.102 | | Statement of use after a notice of allowance | 6 months, extendable in 6-month increments to 36 months from the NOA | 15 U.S.C. § 1051(d) | | Petition to cancel on abandonment | Any time | 15 U.S.C. § 1064(3) | | § 8 declaration of continued use | Between the 5th and 6th anniversary of registration; 6-month grace | 15 U.S.C. § 1058 | | § 15 incontestability | After 5 consecutive years of use post-registration | 15 U.S.C. § 1065 | | § 9 renewal | Between the 9th and 10th year, then every 10 years; 6-month grace | 15 U.S.C. § 1059 |

Government fees change by rule. Confirm every amount at 37 C.F.R. § 2.6 before quoting a client.