There have been a lot of insightful articles written about the importance of choosing a distinctive brand name. But adopting a memorable trademark is just the beginning. To do trademarking right, it is important to “clear” the trademark—that is, make sure no one got to your name first.
Most trademark lawyers vet trademarks in a two-step process, the first quick, the second, comprehensive. The first step is a records search of the U.S. Patent and Trademark Office's free public database. Trademark searching is an art, and just because the database search does not turn up any identical marks does not mean there are no obstacles. For example, if your new mark is EXPEDITE and someone has a prior registration of XPEDITE, you may have a problem on your hands.
If the database search does not reveal any significant problems, the next step is to order a full search report. In the U.S., trademark rights come not just from registration but also from use of a mark in selling or providing goods or services. The full search report, ordered from companies like Thomson Reuters, CT Corsearch and CSC NameProtect, cover state registrations, various news and business databases, domain name registrations and the Web, which may turn up use of confusingly similar trademarks.
Trademark clearance is like taking an x-ray or MRI. It provides an overview of the landscape, outlining the risks to moving forward. Wouldn’t you want to know if you had a blocked artery sooner rather than later? So why spend all the time and money to launch a new product only to find out later that someone claims you are infringing their mark? The small investment made at the beginning of the process pales compared to the expense of changing a mark down the road and losing all the goodwill in the name.
Trademark clearance also informs the application filing process. You may learn things from trademark searching that may cause you to change the way you apply for registration. If there is a potential obstacle, you may want to add your company name or a design to the mark in order to minimize the risk of conflict.
Once you clear a mark, you’re going to want to apply for a trademark registration. It’s best to have a trademark lawyer file for you?there are tricks of the trade in maximizing impact and minimizing risk, even in filling out the application form. Some business owners are tempted to save some money by using document preparation services to file the application. These services are not licensed, not insured and, simply put, not credentialed. If the Trademark Office requires follow-up information (or if a third party protests), a document preparation service is not permitted to represent you.
Why obtain a trademark registration at all? There are a lot of lawyerly-sounding good reasons (enhanced statutory damages, presumptions of ownership). But the reason that really resonates with brand owners is that it makes it a whole lot easier to get intermediaries like Google, eBay and domain name companies to help you police your mark. If you ask Google to take down an offending ad or ask eBay to remove an infringing auction listing, they’re not going to want to play judge. They are merely going to ask to see a copy of your trademark registration. And taking down one infringing ad or auction will make all that expense in clearing and registering your mark worthwhile.
OPEN Cardmembers Peter Sloane and Martin Schwimmer are Partners of Leason Ellis LLP, an intellectual property law firm.
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