Choosing a brand name is similar to choosing a baby name—only harder.
Fall in love with the name Madison, Charlotte, or Emma? No problem. Your child might encounter others in her class with the same name, but no one will sue you for it.
Of course, such similarities are not tolerated in the business world where money is on the line for brands, products, and services. Put simply, if you care about your name, you must register its trademark. And while common law does offer some protection, it isn't wise for any business to rely solely on it. Should you ever choose to expand your offerings outside of your region, you will risk trademark infringement.
The 5 Most Common Trademark Search Mistakes
So, how does one embark upon the trademark search and registration process? In this article, we'll reveal how to avoid some common mistakes many companies make and what to do instead. Once we're finished, you will know how to streamline the search process for optimal results.
1. Waiting Too Long to Register
New businesses, products, and services pop up every day and all of them are being branded by their creators. One of the most significant parts of building a brand is selecting a name and logo. The problem?
The global economy has made the marketplace increasingly crowded. Will we ever run out of naming options? No, there are a surprising amount of creative ways to generate new brand names. For example, the European mobile and service provider Orange borrowed its name from the popular fruit and color. By trademarking this name, they can protect themselves as the only telecommunications provider with the name. This is just one of many examples of how to generate unique trademarks.
Unfortunately, the longer you wait the more you risk losing the mark you love to someone else. Common law rights can only protect usage when you can prove you were first in your area. And that's not always easy. If you wait until after you've dropped a significant amount of money on design, branding, manufacturing and/or promotion, you may have to change everything!
2. Ignoring Alternative Geographic Regions
You absolutely need to register your trademark if you plan to do business outside your local jurisdiction.
Unfortunately, common law trademark rights do NOT extend across the Inter-webs.
Today very few product and service providers are in business with no plans for expansion. Thus, moving forward with marks that haven't been vetted outside your current geographic location can turn into costly errors. Though it may seem tempting to forgo the additional costs of overseas registration, it's usually not worth it long term.
Most of the costs associated with registering abroad are related to search, not registration. With TrademarkNow you actually get unlimited foreign search for a flat subscription fee. Translation: No more excuses for not checking all geographic regions!
3. Limiting Search to Free Databases
The trademark registration process is notoriously expensive and slow. Which is why many professionals understandably turn to free search databases to support their efforts. The problem?
Free databases are often disorganized, lack annotation features, reporting functions and search history. Essentially, they're free for a reason. You have to ask yourself: If a search tool isn't delivering what's needed—a clear picture of whether you're eligible to register a mark—is it really worth it?
Factor in hours of wasted manpower and the possibility of premature brand commitment and"free" suddenly won't look so free anymore.
4. Overlooking Important Details
A comprehensive search process includes a search of federal trademark applications; federal trademark registrations; and common law uses, including business directories, company names and domain names.
Note: Individual state trademark registrations are still conducted by smaller companies who don't plan to do business outside of their home states (i.e. local restaurants, mom and pops). But most businesses prefer to register across the U.S. since the cost is basically the same.
The common law trademark search may be one of the most overlooked. And that's probably because it's generally the final step in the trademark search process. It usually involves checking directories, databases, and other sources to see whether a given trademark is already in use. Another often overlooked detail is ignoring use requirements.
For example, a registered name may actually be available for use if it hasn't met usage requirements. Our UsageCheck feature can determine usage compliance within seconds, potentially saving companies from prematurely throwing out top name contenders.
5. Using Inefficient Search Methods
The most common trademark search mistake is ultimately the tools used. Free search methods provide copious amounts of data with limited organization. Traditional legacy providers charge an arm and a leg to generate large reports that lack flexibility.
At TrademarkNow, we believe your organization:
a). Should NOT be limited by search numbers based on cost,
b). Should have instant access to ranked potential threats, and
c). Should have technological results that can be understood in seconds (not days).
That's why we created NameCheck and NameWatch. The complimentary programs are powered by a sophisticated algorithm that can process 5-hours-worth of "human search work" in 15 seconds.
They allow users to do an unlimited number of searches (regardless of class or region), electronically monitor an unlimited number of marks and evaluate categories that aren't available with other systems.
Successful Trademark Search and Registration
As you can see, avoiding these common mistakes can shave months off the clearing process. A strategic search process can be the difference between quick registration and continuous delays.