Deciding on the name of a company or product can get messy. When do you register a trademark? Must you register? What are the pros and cons? We know these questions aren’t necessarily running through your mind during the creative process. However, we are here to tell you that these questions SHOULD be a part of selecting a company or product name.
Federal registration of a trademark has many advantages, like:
- Evidence of ownership
- Enforcement power and ability to collect damages from infringers, and
- Exclusive rights to use the mark on or in connection with the goods or services set forth in the registration
Trademark Story Time…
We had a new client whose prior attorney did not check for trademark infringements. The startup received a cease and desist from a company operating in a similar industry with the same name, and unfortunately lost that battle. The client had to completely rebrand, hire naming consultants, and restart the creative process. Lesson learned: make sure you’re in the clear before you choose a name and run with it. You can easily check for existing registered trademarks on the USPTO’s website; however, it is best to have an attorney research for you.
When working with a new startup, we walk the founders through the following process:
- Consult on proper mark for trademark.
- There are several ways to put the public on notice that you have the intellectual property rights to a name, brand, or product.
- For example, ® stands for registered trademark with the U.S. Patent and Trademark Office (USPTO); SM marks represent unregistered services; and TM marks represent unregistered trademarks.
- Determine whether to trademark the name of the company or a product.
- Seek distinctiveness. The degree of protection available under trademark law is determined by how distinctive the trademark is: the more distinctive, the better.
- Conduct search and analysis to assess availability of the mark.
- This step ensures that someone else has not already established rights in the proposed mark. Such searching should include both federal and state searches.
- Prepare and file a Federal trademark application with the USPTO.
- Correctly identifying goods & services is one of most important piece of application & messing this up may prevent you from registering.
- For more information regarding registration, consult the USPTO’s trademark basics webpage.
Overall, the process is not too complex, but it should be left to a competent attorney. Google searches are a good start. However, there is no substitute for consulting with a qualified trademark lawyer before investing heavily (financially or emotionally) in a brand. You want to avoid planning to launch a business around a clever, catchy brand name that can’t be used. It is a sad and expensive journey when a startup has to change its identity, branding and marketing materials, website domain, and all other aspects that come with infringement. Thus, It is essential that the startup selects a name and branding strategy from the onset that does not infringe on any trademarks.
For more startup legal failures, read our ten legal dos and don’ts.