Structuring Trademark Clearance Opinions
Assessing Search Results to Identify Infringements, Overcoming Clearance Challenges, Preparing Opinions to Reduce Legal Risks
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, August 12, 2025
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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This CLE course will guide trademark counsel on conducting, analyzing, and using trademark searches. The panel will discuss overcoming the challenges in the trademark clearance process and outline best practices for preparing clearance opinions.
Mr. Chambers is the Chief Trademark, Copyright and Marketing Counsel at Ecolab, where he manages a global trademark portfolio with over 14,000 filings in 170 countries. Before Ecolab, he was the senior trademark and advertising counsel at Impossible Foods in California. Prior to going in-house, Mr. Chambers practiced IP law at Greenberg Traurig and several other firms in Minnesota.
Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and management of domestic and international trademark portfolios. He also has significant experience assisting clients with trademark enforcement, opposition and cancellation proceedings; brand protection programs; trademark, unfair competition and false advertising disputes and litigation; internet domain name disputes and proceedings (UDRPs); and trademark licensing. He provides tailored advice for handling IP issues involving social media; IP due diligence and IP licensing; copyright counseling, registration, protection and litigation; Digital Millennium Copyright Act (DMCA) notice and take down procedures; and domain name acquisition.
Mr. Weseman helps brands by applying his knowledge of trademark law, enhanced by years of experience, to complex trademark problems and communicating advice to clients simply, in plain language, with a focus on business outcomes.
Before a business adopts a mark, counsel must understand all potential infringement risks. In-house and outside counsel rely on trademark clearance searches to identify those risks. Counsel must carefully analyze the results of the clearance search and assess the risk posed by using the proposed mark. Millions of dollars may ride on the analysis and decision on how to proceed based on the clearance opinion.
Many courts recognize reliance on trademark searches and counsel's clearance opinions as a defense to infringement claims. However, the assertion of the advice-of-counsel defense may put the privilege waiver at risk. Companies and counsel should consider whether to obtain a formal written clearance opinion. If yes, the circumstances will shape what to include in the opinion letter.
Listen as our authoritative panel of trademark attorneys examines the analysis and use of the clearance report, reviews the challenges in trademark clearance, outlines steps to overcome the obstacles, and offers best practices for clearance opinions.
I. Analysis and use of search reports
II. Clearance challenges and steps to overcome them
III. Best practices for preparing clearance opinions
The panel will review these and other key issues:
- What factors should counsel consider when analyzing a clearance report?
- What strategies can counsel use to overcome the challenges posed by the trademark clearance process?
- What should be included in a trademark opinion letter?
- How can counsel protect client confidentiality when asserting an advice-of-counsel defense?
