What Does a Trademark Availability Opinion Tell You?

A search report is a stack of records. A trademark availability opinion is what a lawyer concludes from them: which of the hundreds of hits actually threaten your mark, how likely the USPTO is to refuse your application, how likely a prior owner is to object, and what you should do about each risk. The opinion is the deliverable at the end of our trademark search and written availability opinion service, and it is the document a client reads, keeps and relies on. Here is what should be in it and how to use it.

What goes into a trademark availability opinion

The opinion begins by defining what was searched: the mark as you intend to use it, the goods and services it will cover, and the sources reviewed. That scope matters, because an opinion on a word mark for software says nothing about a logo or about apparel. Our post on knockout versus comprehensive trademark searches explains why the comprehensive search is the one an opinion should rest on.

The body of the opinion walks through the prior marks that matter. For each one it states who owns it, what it covers, whether it is live or dead, and why it does or does not present a conflict under the likelihood of confusion factors. Irrelevant hits are discarded with a sentence. Close calls get a paragraph.

The opinion then addresses registrability apart from any conflict: whether the USPTO is likely to find the mark descriptive, a surname, geographic or otherwise unregistrable. It ends with a risk rating, a recommendation and, where risk is manageable, a list of steps that would lower it.

Reading the risk rating

Most opinions rate risk on a three-level scale, and the levels mean specific things. Low risk means the search found no mark that an examining attorney or a competitor would be likely to cite, and no registrability problem; file with confidence. Moderate risk means the search found arguable conflicts or a registrability concern that can be managed with the right drafting, evidence or negotiation; file with a plan. High risk means the attorney expects a refusal, an opposition or a dispute, and recommends a different mark.

What the rating never means is a guarantee. An unregistered user with no web presence can go undetected. An application can be filed the day after the search. And the examining attorney assigned to your file exercises independent judgment. A good opinion says this plainly rather than burying it in boilerplate.

Registrability issues the opinion should flag

A name can be free of conflicts and still fail at the USPTO. The opinion should tell you if the mark immediately describes the goods, if it is primarily a surname, if it names a place associated with the goods, or if part of it is generic and will need a disclaimer. It should also note whether the mark echoes a famous brand closely enough to raise a dilution claim, which does not depend on related goods or on confusion. These issues change the recommendation. A descriptive name that clears every conflict search is still a weak brand, and the opinion should say whether a stronger alternative is worth the trouble.

What the opinion recommends when risk is moderate

Moderate risk is where the opinion earns its fee, because the recommendation is a set of options rather than a yes or no. Depending on the conflict, those options include narrowing the identification of goods to avoid the overlap, adjusting the mark so the dominant element differs, approaching the prior owner for a consent or coexistence agreement, investigating whether a cited registration is still in use and could be cancelled, or filing and preparing in advance for the office action the opinion predicts. Each option carries a cost and a residual risk, and the opinion should lay both out so you can choose. Our post on how likelihood of confusion is decided explains the factors the opinion applies when it weighs those options.

How to use the opinion after you receive it

Decide, then act on the decision promptly. A clearance opinion is a snapshot of the register on the search date, and the longer you wait to file, the more likely a new application lands ahead of yours. If the opinion supports filing, the next step is a USPTO trademark application drafted to match the scope the opinion cleared.

Keep the opinion. It is privileged advice, and it is also evidence. If a dispute arises later and the other side claims you adopted the mark in bad faith, a written opinion from counsel that you relied on before launch is a concrete answer. Finally, treat the opinion as expiring. Order a fresh search before you expand into new goods, adopt a new logo or extend the brand abroad, since the original opinion covers none of those. The broader set of trademark services the opinion feeds into is described on our trademark law page.

If you have a search report and want to know what it means for your mark, a consultation with Capitol Law Partners can turn it into a decision. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our trademark availability opinions page or schedule a consultation.