Evolving Options for Design Trademark Clearance Searches: AI as a Useful Tool to Supplement Your Clearance Efforts

Not too long ago, clearance of design marks and logos in the U.S. was mostly limited to a search of Patent and Trademark Office (PTO) records, which only yielded designs in filed applications, not other uses of design marks or logos that could still have trademark rights regardless of whether an application was filed. The PTO categorized designs according to elements coded by clerks at the PTO based on their perception of a design or how the applicant voluntarily described the mark. Those elements were assigned numerical design codes at the PTO (e.g., 01.01.06 for stars with radiating lines) that you could search, or you could search keywords if the applicant described them appropriately in the description of the mark in the application. Such searches typically yielded thousands of largely irrelevant results that needed to be manually reviewed or culled by further search terms using, for example, the goods or class. Other than searches at the PTO, searching options could also include reverse image searches, such as by using Google Images, as a part of the vetting process for design marks and logos. Other than PTO filings and reverse image searches, options were limited. Accordingly, those with prior rights based on use were difficult to locate. While the PTO had a system for categorizing design marks in applications, finding prior uses of design marks was less reliable and brand owners were limited in fully vetting designs, which limited their confidence in the uniqueness of a new logo.

AI Design Search Options and Practical Applications

AI now affords broader, more-efficient, and less-expensive tools to supplement clearance searches, which is particularly important to clear house marks or logos with high visibility, including those on app stores where the design is likely more noticeable than the wording. In today’s world, apps are ubiquitous, and the recent disputes among apps and the icons used to identify businesses highlight the importance of clearance for icon designs. App stores offer apps across every industry, and they all use an icon to offer products to consumers at the touch of a finger or a mouse.

We rely on apps to travel, order food, check the weather, and transact business in every industry. Even the Trademark Practice Group at Dykema has an app (please email us at Dykema-TM@dykema.com if you want to test Mark Minder™ and have your entire portfolio and other tools at your fingertips). Many app store operators have informal takedown procedures outside of formal legal proceedings, which increases the importance of obtaining proper clearance to ensure extrajudicial processes are not used to delist a valuable business tool over an allegation of a similar app. Further, protecting your logo through the federal registration process is important to be able to effectively utilize those procedures when necessary. 

With the increasing importance of apps featuring source-identifying designs and the growing availability of cost-effective and efficient design searching, AI provides brand owners more opportunities to select and screen logos and designs. While traditional searches still provide a useful role in clearance, AI offers pixel searches across the internet, app stores, and other databases and thus covers common law uses that could still create a conflict. Further, to rapidly identify direct conflicts, AI can sort and assign risk percentages. While this does not replace review by a skilled trademark attorney/searcher, especially for important marks, AI searches have a useful role, especially when trying to quickly eliminate candidate marks before proceeding to a more in-depth review. 

The Role of Clearance

While courts have stopped short of declaring an affirmative duty to investigate a trademark for conflicting uses prior to adoption of the mark, conducting the clearance search is a prudent business decision to avoid conflicts and expensive changes to branding if an issue emerges. Further, performing the search and obtaining a competent legal opinion protects a business from a finding of willful infringement, which can result in treble damages and an award of attorneys’ fees in egregious situations. There are now many more online tools to help brand owners take these steps prior to adopting a logo or design mark, which should reduce risk and potential problems after use commences. AI and search tools continue to evolve, and the clearance of design trademarks is more reliable than ever and will improve at a rapid pace.