Starting a New Business? Think Trademark Now Not Later

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“Hey, can you get the trademark for our brand?” This is often the first question we receive from our clients. And our answer will always be, “Let us do some research to see if the trademark is available for registration and get back to you.”

While a trademark search should be one of the earliest considerations before using and registering a trademark, it is often overlooked. We get it. The excitement of developing a new product and coming up with a smart name or logo combined with the pressure of putting them in commerce quickly leads people to just forget about it altogether. However, this can leads to money loss and legal battle. A professional trademark search should be the first step prior to using the trademark and filing a registration application. The reasons are as follows:

Reason 1: Avoid Losing Money, Time, and Resources

A business’ trademark is unique to the business’ products or services. It functions as an indicator of the source of the products and quality assurance to the customers. Using a mark without proper search, you might find out that another party has been already using the mark in commerce and obtained Federal registration. In this case, you will most likely to be required to cease using the mark, which can result in a big financial loss with inventory that needs to be repackaged, or may no longer be used at all. You may also lose valuable branding and marketing efforts. You will be basically starting from the beginning with your business.

Reason 2: Increase the Chances of Successful Registration

Filing a registration application with the USPTO does not guarantee you a successful registration. USPTO examining attorneys conduct a thorough search after receiving your application. If they find a duplicate or confusingly similar trademark, they will issue denial notice for the registration application. In this case, you will no longer enjoy federal protection on your trademark and you will have to start all over again for an entirely new application including new sets of filing fees. It is critical to conduct professional research before filing a trademark registration application.

Reason 3: Avoid Trademark Infringement on Other’s Marks

If you begin using a name or logo in commerce without conducting a trademark search, you run the risk of infringing on someone else’s mark. Not knowing the existence of a mark is not a defense to a trademark infringement claim, especially the mark has already been registered with the USPTO. If the other party can prove that your mark caused a loss of business for them, you may be required to pay damages. The damages in a trademark infringement case can be disgorgement of profits and responsibility for the other party’s attorney’s fees.

We will address the basics of a successful trademark search in the future, but we hope our clients, when considering use a trademark, can begin first asking us: “Hey, can you check if the name is available for a trademark?”

Please contact our attorneys if you have any questions about your specific matter. The contents of this article are for informational purposes only and may not be relied on as legal advice.

Olivia ShanksComment