Trademarking a new business is a step that is often skipped over by entrepreneurs while rushing to launch their new startups. Not only can early-stage trademark research and registration help protect your brand, but it can also help avoid infringing on another mark down the road, after pouring countless amounts of time and money into the business.
In an effort to help, I asked several leading authorities in trademark law to provide their best tip for entrepreneurs, related to trademarks.
1. Make sure you’re not infringing on someone else’s trademark.
The most important part of selecting and adopting a name for a business is ensuring that the name is not infringing on someone else’s trademark. This means that an entrepreneur should never fall in love with a name prior to conducting a professional trademark search.
The single biggest mistake we see our clients make is becoming so attached to a name that they put the company at legal risk by adopting and using a name that has a clear legal conflict. It is important to stress the significance of conducting a professional trademark search on a name and not relying simply on DIY searches.
There are many websites which offer “free trademark searches,” which all pull from the USPTO database. Any search done online (even if directly through the USPTO database) is limited because it only pulls exact matches to the desired name. These search engines are not advanced enough to look for all potential legal conflicts.
For example, phonetically similar trademarks and/or trademarks with similar meaning can be very large legal concerns. These online search engines are incapable of pulling such results. In order to receive a true legal clearance an entrepreneur should strongly consider engaging an attorney to conduct and analyze a trademark search. Once a trademark search clears the trademark then a federal trademark application should be filed to secure rights in the name.
Joshua Gerben of Gerben Law Firm, PLLC
2. Perform a USPTO search.
It is important to do a search on the USPTO site prior to trying to register your mark in order to make sure a similar mark isn’t already registered for a similar class of goods or services. This involves searching the name you are looking to trademark first to see if there are any other registrations with the same name.
If there are, a further search will need to be conducted to see if the goods or services you provide are in the same or similar class of goods or services that the registered mark provides. If so, your mark will be denied for likelihood of confusion purposes.
Two marks under the same name cannot be registered if the goods and services provided are in a similar class. For example, if you want to trademark a work for goods you provide in the kitchen utensil industry and you find a mark of the same name selling plates you are likely to get denied since the class of goods are similar.
Kimberly Korn of Law Office of Kimberly Korn, Esq.
3. Seek professional help when filing a trademark application.
Hire a legal professional to prepare and prosecute your trademark application. Ensure that the legal professional has extensive experience in trademark law. I’ve seen many entrepreneurs incorrectly answer questions on their application and improperly file their applications. Many mistakes cannot be fixed and these mistakes can jeopardize your legal rights.
Hiring an attorney to correct mistakes can cost you more than the original filing. It is important to note that a trademark application is a legal document and ignorance of the law is not an excuse to making mistakes. Although the trademark application may seem straightforward, consulting with a qualified trademark attorney can help you to avoid fatal mistakes.
Andrea Evans of The Law Firm of Andrea Hence Evans, LLC
4. Don’t forget to protect your logo and slogan.
Your brand sends an important message to potential clients and customers. After the expenditure of time and expense in developing your brand, including designing logo, slogan and any other images that identify your business in the public’s awareness, it is important to obtain legal protection so it may not be copied and utilized by others in competing businesses.
This protection can be obtained by registering your brand, known as a trademark. A trademark provides legal protection to safeguard your brand from being used improperly by competitors. The United States of America maintains a trademark office where your trademark can be registered legally.
Obtaining a trademark requires the applicant to submit a copy of the trademark, an explanation of how and where it will be used and proof of ownership. Useful information regarding the requirements to obtain a trademark and the requisite forms which must be submitted to register the trademark can be obtained online from the US Patent and Trademark Office.
The site also contains a host of frequently asked questions which will provide an applicant further information and guidance. Consulting with an intellectual property attorney may provide further details and address any other concerns.
Michael Kaplen of De Caro & Kaplen, LLP
5. Think long-term with a franchise mindset in terms of brand protection.
Trademarking can get tricky so it’s very important that businesses trademark and get all associated business licenses right away. The same should be said for any website domain and social media profile as well.
Far too often I work with established businesses that look to franchise and hit a roadblock when it comes to the trademark. The last thing these emerging franchise companies want is to be forced to reinvent themselves, losing their established branding, because they didn’t trademark their original name and have to create a new one for the franchise.
Harold Kestenbaum of Harold L. Kestenbaum, P.C.
6. Choose a unique business name.
My number one tip relating to trademarks for an entrepreneur is to choose a unique trademark. This reduces the likelihood of running into a conflict with someone else who has prior rights in a similar trademark, and also makes it easier (and therefore less expensive) to register the trademark and prevent others from using a similar trademark.
There are other important steps to be taken in the trademarking process, including conducting a thorough search to minimize the risk of conflicts and registering the trademark to better protect it. But choosing a unique trademark will likely make the entire process more streamlined.
A unique trademark is one that is distinctive, and different from what others in a particular space are using. An invented word is best (e.g. KODAK), but a word taken out of context can also make a good trademark (e.g. APPLE for the sale of computers, but not for the sale of fruit).
Jennifer Marles, Partner at Oyen Wiggs
7. Monitor your trademarks against infringement.
Aside from actively registering your company’s trademarks, service marks, logos and taglines with the U.S. Patent and Trademark Office to protect the branding for your products and services, it is also very important to police your trademarks against infringement so that no one can usurp the goodwill you have developed.
Registering a trademark gives you the exclusive right to use that trademark for your products or services, which includes the right to keep others from using it for the same products or services. If multiple companies offer the same product or service under the same or very similar brand name, consumers will be unable to tell whose products or services they are getting. This is called “consumer confusion.”
A likelihood of consumer confusion is the standard courts use to determine trademark infringement. Often, to support a claim of infringement, the infringing trademark does not need to be identical to yours. Consult an attorney regarding how confusingly similar these trademarks are.
It is important to always police your trademarks both online and in everyday uses. If you discover an infringement, send cease and desist letters as soon as possible so that the dispute can be resolved quickly before the infringer opened his business, built his website or invested in signage or promotional printed materials. You can set up Google alerts with your trademarks and taglines to monitor who is using your trademarks and how they are used on the Internet. Have an attorney set up alerts to monitor your trademarks.
Elizabeth Lai Featherman of Mandelbaum Salsburg