If you’re just launching a new business, there are a few things you need to consider before getting too far along in the name game. Sure, you may have come up with what may well be the most brilliant brand in existence. Ever. BUT, before you go slapping that name on everything from shipping labels to stationery, here are three important tips to guide you down the path to building a strong and successful brand identity.
Trademark Tip #1: Clear your mark, clear your mark, AND clear your mark.
By “clear” I mean hire an attorney -- with expertise in trademark law -- to conduct a full trademark search that contains third party references from a variety of resources throughout the country, including federal, state, and common law (unregistered) uses. Beware: a quick, or even not-so-quick peek on the Internet is not sufficient. I understand that you are likely watching every penny, but it’s wise to spend a little up front on proper trademark clearance to insure that there is no one else using the same or a similar name for a similar product or service. If you get too far down the road, it could be disastrous if you end up having to re-brand, destroy all of your merchandise, and invest in all-new marketing materials, or worse -- defend your business from a trademark infringement claim. The cost to properly clear a trademark is far less than the cost of a lawsuit.
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True story: this is what can happen when you fail to properly clear your trademark.
Trademark Tip #2: Seriously Consider Federal Trademark Registration.
A federal trademark registration is beneficial for several reasons. The owner of a federal trademark registration enjoys a presumption of validity of the registration and presumed ownership of that particular trademark. In addition, the federal trademark registrant is presumed to own exclusive rights in that trademark in connection with the product or service identified in the registration throughout the entire country, as opposed to rights limited to your local geographic area. A federal registration is also considered constructive notice to others that you are holding out that trademark as an identifier of source, which is a fancy way of saying that the trademark identifies where your particular product or service comes from. (As a small business, that means YOU.)
Trademark Tip #3: File For Trademark Registration Sooner, Rather than Later.
If you wait too long to file a federal trademark application, you run the risk of a pesky intervener, also known as that darn so and so who beat you to the punch. If another company or individual files a federal trademark application for a trademark that is the same as, or even similar to your trademark before you do, the United States Patent & Trademark Office (“USPTO”) automatically gives that filer priority over anyone else, REGARDLESS OF WHETHER YOU STARTED USING THE SAME TRADEMARK FIRST. So setting the fact that you may have a legitimate right to use the trademark aside, a delay in filing could result in your having to spend additional money to oppose the application of the other trademark, or to petition to cancel that trademark if it has already registered.
Here in the United States, you don’t have rights in a trademark until you actually start using it in connection with your particular product or service. However, the USPTO permits trademark applicants to file an application before actual use of the trademark begins. This “intent-to-use” trademark application will basically give you priority over other subsequent filers. In other words, you can secure your spot in line, but you won’t be able to obtain a valid trademark registration until you actually start using the trademark to offer your product or service.
Bonus Tip: If you play your cards right, your trademark could be of significant value, both monetary value and to your business goodwill. With respect to monetary value, one of the things any seasoned investor will look at before agreeing to invest in your business is whether or not you have properly secured your trademark rights, and that includes conducting due diligence and obtaining a trademark registration. And even if you aren’t in the market for investors, establishing a strong brand identity and securing a registration can only improve your reputation as a quality source for the product or service you provide.
These tips are just the beginning. If you want your business brand to succeed, start by consulting a trademark lawyer.