Is it OK to just pick a brand name that you like and start using it to identify and sell your products and services? Maybe, but I wouldn’t generally suggest that. The problem is that you might infringe someone else’s trademark.
When trademark infringement occurs, a best-case scenario may be that you rebrand and negotiate a reasonable phase-out period that allows you to sell through your existing product inventory (instead of destroying it at your cost). Still, you loose the goodwill that you’ve built in the original brand, and there’s a larger risk of damaging the reputation of your company, product and service.
A worst-case scenario is that you’re deemed a “willful infringer”, and a court requires you to pay hefty damages. Let’s avoid the latter. In fact, let’s try to avoid infringement altogether.
To keep things simple, we’ll discuss three levels of trademark searches. They will vary in scope and cost. You can also watch our Trademarks for Business tutorial for more context.
Ask a Search Engine. Very informally, this can be as simple as typing Your Brand Name + Your Product or Service Type into a search engine (Google, Bing, Yahoo - take your pick). That’s essentially free, and it’ll give you a rudimentary early idea as to whether someone has already invented your wheel (although inventions are the stuff of patents, and we’re talking trademarks). The problem is that a simple search like this will not reveal actual trademark applications or registrations on record with the U.S. Patent and Trademark Office (“PTO”), or the trademark offices of the 50 states. They matter.
Consult an Attorney for an “Immediate Elimination” Trademark Search. These are also known as “knock-out” or preliminary searches. An attorney can conduct limited scope trademark searches to reveal marks at the PTO that might increase the risk of challenge during the trademark registration process, or result in a third party dispute. The value of the Immediate Elimination search is to identify potentially problematic marks as early as possible, before your investment in advertising, marketing and product packaging - and, before you encounter a legal dispute. Because an Immediate Elimination Search is a limited scope review, if the results are positive, the next step is to conduct a fuller review of the trademark landscape.
Go “Comprehensive”. A comprehensive trademark search includes evaluation of the PTO records, the 50 state trademark databases, corporate/trade name registries, domain names and search engine results. While it's impossible to guarantee that any trademark search will reveal every relevant mark, a comprehensive trademark search is the best available tool in the trademark industry to identify potential risks. Third party search firms conduct the search, and the resulting report is typically several hundred pages long. Trademark counsel can distill it down to what matters, and help assess the risk level of adopting your chosen brand. Costs will vary, depending upon factors such as the search scope, any design elements, how many “classes” of goods or services are evaluated, and the urgency of your search request.
Keep in mind, a trademark search is not a guarantee of non-infringement. This is, in part, because using a brand name can build “common law” trademark rights that may not be revealed in a trademark search. We’ll leave those details for another discussion. Suffice it to say, working with an experienced trademark attorney helps in evaluating brand adoption risks, like those posed by common law marks.
Also, know that trademark availability changes in real time because many (if not all) trademark offices (federal and state) in the US accept online applications. So, you can conduct a trademark search at 10am, but by noon, someone else may have filed a trademark application for the same (or similar) trademark, which prohibits you from using that brand name. Timing matters.
Your brands are your reputation. Whether your goal is to organically grow your business for the long term, attract investors, or exit the venture at a premium, sound intellectual property clearance is a prudent investment. Early trademark searches will allow you to fail an unavailable brand fast, and move on to the winners. And working with experienced trademark counsel provides the valuable judgment to help you to effectively navigate that process and avoid the costs of unnecessary risks.
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JoAnn Holmes ("Jo") is the founder of HOLMES@LAW, LLC. She serves as Outside General Counsel to select, intimate management teams for midsize companies. Likewise, Jo provides strategic support for lean law departments.
Jo founded HOLMES@LAW to provide agile, result-driven legal solutions. Beyond risk management, we help identify opportunities. The firm's focus areas are business law and strategy, commercial contracts and global intellectual property management. We build long-term relationships as trusted collaborators, and our flexibility consistently yields great value for clients.
HOLMES@LAW is also committed to service work, including through supporting local schools and leadership groups, as well as domestic and international charities. Since its founding, the firm has dedicated more than 200 hours to community service.
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