What would you do if after investing thousands of dollars on (1) selecting a name for your business, (2) creating signage and advertising, (3) setting up a website and social media presence, (4) printing letterhead, envelops and other stationery, . . . and most importantly (5) establishing consumer awareness of your business name and brand–, you receive a letter from an attorney demanding that you immediately cease and desist all business under that name or face a federal lawsuit for trademark infringement?
Wouldn’t you rather be sending that letter than receiving it? Most successful businesses carefully plan which trademarks they select and adopt for use before making that type of investment, and take steps to protect it. Others seek to identify any roadblocks or obstacles (ie. companies with similar names for similar goods or services) that may stand in their way, even after use commences. Through careful planning and by identifying roadblocks, businesses can successfully navigate through the often murky waters of selecting a protectable trademark, while at the same time taking precautions not to infringe on another’s rights.
Starbucks®, Anyone?
Creating a brand that resonates with your customers is one of the most valuable assets a company can have. Wawa®. Dunkin Donuts®. Starbucks®. We all have our favorite — and we all have a certain expectation of quality, service, and price from each of those brands, regardless of whether we walk into a store in Philadelphia, Boston, or San Francisco. All businesses should strive to create those expectations for the customers they serve. Businesses can live or die on “brand reputation.” As such, selecting a protectable brand and clearing it for use and federal registration is often a critical component of any business.
General! Which Way Should We Go?!
The first step to determine the availability of a trademark/ service mark (“mark”) for use and registration is to do a “knock-out” search of the existing records in the United States Patent and Trademark Office. A knock-out search helps determine up-front whether others have either federally registered or applied for identical marks for the same goods or services that you want to use it for.
If the results are positive, the next step is typically a comprehensive U.S. trademark search, which provides a more complete picture of brands that exist in the market and seeks to flag any potential obstacles that may impact your use and/or attempt to register a mark. The comprehensive search includes a search of similar non-registered trademarks and business names that may cause a problem for you down the line. That is, even though a party does not register a mark federally, they still enjoy common law rights to it, which could be a potential problem if you adopt and use a confusingly similar trademark.
Put another way, a comprehensive search is like a General planning to move troops through a battlefield. The troops are assembled and know their mission. But it’s the General’s job to identify potential landmines on the battlefield first, and change the course if need be, to allow them to navigate through and complete their mission. A comprehensive search helps to avoid landmines – or at least to know where they are and understand the risks. The results allow you to make informed decisions about the direction of your brand to help you create long-lasting valuable goodwill in your business.
Robert McKinley, Attorney has helped clients protect and enforce their brands nationally and internationally for almost two decades. If you would like assistance with clearing or protecting your trademarks, please contact him at 609-770-7958 or [email protected].
No Legal Advice or Attorney-Client Relationship: These materials have been prepared for general informational purposes only and are not legal advice.
