Protecting Your Brand, Part 1 – The Importance of a Thorough Trademark Search

Brand recognition is important to many businesses. Much like larger companies, there are certain things that we hope will cause our customers to think of us and our message. For example, Nike has the swoosh symbol, the slogan “Just Do It,” and even the name Nike. When we see these things, we automatically think about that particular company and its products. And for better or worse, we want the real thing from Nike and not some knock-off counterfeit. And the same is true of service-based businesses. When you hear “What’s in your wallet?” you immediately think of a certain bank.

Think for a moment about what your customers or clients see that they associate with your goods or services. Now think about the time and effort and even money your business has put into that branding, and you’ll immediately understand why it’s so important to protect that brand. In this series, we’re going to discuss just how to do that by registering for and protecting your trademarks.

What is a trademark? And why should I register my trademarks?

A trademark (or mark for short) is a distinctive word, phrase, logo, or graphic symbol that is used to identify the source of a product or service and distinguish your products or services from someone else’s. While your business does have some common law rights in trademarks that are not registered, registration with the U.S. Patent and Trademark Office does provide important benefits:

• Registration creates a legal presumption that your business owns the mark and has the exclusive right to use it nationwide in connection with the goods and services listed in the registration. (FYI: The idea of mailing something to yourself to prove when you created it is an urban myth.) You should also know that a state registration only provides rights within that state, and not registering at all, i.e., what we call common law rights, only extends protection to the specific area where the mark is used.
  
• Registration puts the public on notice that you claim ownership in the mark. It’s not a defense to  claim of trademark infringement that you didn’t know someone else had already registered a similar trademark.
  
• Only federally registered trademarks are permitted to use the symbol ®. (But feel free to use the TM symbol.)
  
• Without registration, you cannot sue someone else for trademark infringement in federal court. Without getting into the nuances of which courts have jurisdiction over what cases and when, suffice it to say that without registration, the courts are extremely unlikely to hear your case.
  
• Registration allows your business to register with Customs and Border Protection to prevent the import of infringing goods from overseas. And if you do business overseas, a U.S. registration can be used as the basis for obtaining registration in foreign countries.
  

Your Mark vs. A Confusingly Similar Mark

Because the purpose of a trademark is to distinguish your products or services from those of your competitors, the basic standard for trademarks is that one cannot be “confusingly similar” to another.

Often, I’ll hear from a prospective client: “I did a Google search and no one else has the exact same name / logo / slogan.” If you take nothing else from this post, remember this: Just because another company’s mark isn’t exactly the same as yours does not mean that we can register your trademark (or that your business won’t be sued for trademark infringement). The question is whether your proposed mark is “confusingly similar” to the mark that is already registered. All too often, small businesses wait for their branding to “take off” before getting a trademark search done. They spend time and money with marketing companies and graphic designers building fancy websites and designing pretty marketing materials. (And let’s be honest—that’s a lot more fun than hiring an attorney.) It’s only later that we run a trademark search and learn that there’s a very poor chance the trademark you’ve put so much effort into will actually get registered.

Just because another company’s mark isn’t exactly the same as yours does not mean that we can register your trademark (or that your business won’t be sued for trademark infringement).

On the other hand, it’s also not enough to proclaim “well, I’m not worried about registering my trademark, so I don’t have to worry about whether anyone else has a similar name / logo / slogan.” I’ve also seen a number of entrepreneurs get a nasty cease and desist letter when a competitor learns that they are using a similar mark. Often, customers are voicing confusion over the similarities, wondering if the two companies are related or doing business together. Because the law presumes that everyone is aware of registered trademarks, ignorance is not a defense. The end result is that you now have to find a way to rebrand your entire company or the affected product line. Thousands of dollars spent on product labels, marketing, social media campaigns, website development, and so on are now all down the drain. (Ignoring the cease and desist letter and continuing to infringe just makes matters worse. Now, your infringement is willful, meaning the court can assess higher damages to penalize you, and in extraordinary cases, even order that you pay the other side’s legal fees.)

This is why it’s so important to conduct a thorough trademark search before you settle on your branding, even if you don’t think you’ll pursue a trademark registration. You need to be sure you’re not infringing someone else’s trademark (even inadvertently) and you need to know the likelihood of getting your brand registered and protected. The time to call in legal advice is at the same time you call in your marketing guru. This is one of those areas that needs to be a team effort.

Go to Part 2: Just what is "confusingly similar"?

If you have questions about your business’s trademarks and how to protect your brand, then schedule a consultation today.

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Photo by Patrik Michalicka on Unsplash
Photo by Nik Shuliahin on Unsplash