Let’s start out with a scenario that may be familiar to some of you. You’re starting a new company, or launching a new brand for your existing company. You have everything planned, even down to the brilliant name that you envision being mentioned in the same breath as Google, Facebook, and Twitter in the future. You think you’re ready to hit the ground running and put your company’s name and logo out there so your potential customers and investors can become familiar with your company.
Even with your detailed planning, have you done everything you should have done before you start using your company’s name or logo? If you haven’t given thorough consideration to the trademark issues relating to the name you plan to use, you could be setting yourself up for trouble.
As it was defined in an earlier post of this blog, a trademark is “a word, a phrase, a symbol and/or a design, or a combination of these that identify a source of goods with which the trademark is associated.” (See previous post here) Further, a trademark is also used to distinguish the goods of one party from the goods of another. Service marks are similar, with the distinguishing factor being that they apply to services performed by a party.
I recently listened to the first season of a podcast called “Startup”, which chronicles the early stages of a company now known as Gimlet Media. Prior to settling on the Gimlet name, the company’s founders considered a host of other names, several of which were eliminated due to concerns over an existing trademark under the same or a similar name. Fortunately for Gimlet’s founders, they were the recipients of pro bono consulting on this issue from a branding firm, or at least in exchange for mentioning the firm in the podcast. Obviously the overwhelming majority of startups will not have the opportunity to take advantage of such an offer, but there are other ways that a company can put themselves in a better position to feel comfortable that they are avoiding any trademark landmines.
One excellent method a company can use to protect itself is to run a comprehensive trademark search. These searches can determine whether the desired mark, or one similar to it, is already in use. A search conducted and analyzed by an attorney who is well-versed in trademark law can help to determine whether a company is likely to run into challenges to their use of a mark, or if that risk is lower. This is important because the costs incurred in litigating a trademark dispute can be a crippling expense for a fledgling company. For one, early stage companies might not have the financial resources to handle a lengthy trademark battle. Further, it can put your company in a state of uncertainty while the case is pending. I have heard several times that businesses can deal with bad news, but they have trouble handling uncertainty. Conducting a thorough search can help to manage this risk.
I must note, however, that results of a trademark search typically do not provide a guarantee that a mark is clear of any potential trademark risks. Trademark oppositions must be brought by the party claiming an issue, so it remains a possibility that a party could have a different interpretation of the similarity of a mark.
Overall, I typically advise people to err on the side of caution. Given that ignorance of the law can be a very expensive mistake, I wholeheartedly subscribe to that approach when it comes to legal matters. In a trademark situation, taking this more prudent approach could save a company significant money in the future.
For more information on this subject, please browse our firm’s online Intellectual Property Library, found at: http://www.evans-dixon.com/patents-and-trademarks-library.aspx or visit the website for the United States Patent and Trademark Office at: www.uspto.gov.
