by Jennifer Liotta, special to BeyondMVP
Choosing a trademark or service mark is an important decision for a business owner. It’s a good idea to hire an attorney to review a potential mark and potentially secure registered trademark rights. However, there are some simple, practical steps you can take to assess a potential mark.
1. Consider a basic internet search.
A simple search of the internet can reveal a wealth of information about a trademark that you are considering. Is a third party using the mark in a domain name? Is a third party already offering goods or services under the proposed mark? If so, are those goods or services similar to what you are planning on offering? If an internet search results in a large number of current uses, think about how much time, money, and effort you may have to spend to differentiate your use from such existing uses. Even if you can get trademark rights in a crowded field, you may determine that it isn’t worth pursuing from a business perspective.
2. Did you know spelling and spacing doesn’t matter for trademark rights?
Using an alternate spelling, adding spacing or combining words are not effective ways to distinguish one trademark from another. For example, using the mark “CrispyCream” for donuts would infringe the registered rights of Krispy Kreme. Consider this and try internet searches with alternate spellings of a mark you are considering.
3. Using a branding company? Make them clear any trademarks they propose.
Branding and marketing companies are full of creative people that can help you name a company or product. However, oftentimes these creative folks will come up with great names – that can’t be registered or infringe existing registrations. Before hiring a branding consultant, understand what that company will do to research other uses of the mark (and very similar marks, such as alternative spellings). While a branding consultant cannot provide a legal opinion as to a trademark, consultants can certainly do some basic due diligence on other uses and provide that information.
4. Search the USPTO database.
Trademarks can be registered before being used in commerce. Such applications are known as “intent to use” applications and might block a use you are contemplating, even when your internet searches result in no relevant hits. A basic word search of the USPTO trademark database can tell you if there are any active registrations or applications on file for a given mark. Basic word searches are no substitute for attorney review or a full trademark search. However, such basic word searches can at least “knock out” exact matches.
Be mindful that even an exact match may not bar you from using a mark for a different category of goods or services. When in doubt, consult an attorney.
5. Thinking about intellectual property strategically.
Trademark rights can be secured for words, designs, uses of colors or even sounds. Your options may expand beyond trademark into design patents and other forms of intellectual property protection. Give some thought to how you are positioning a product and put together a file of any marketing materials, product designs, etc. An attorney can help you sort through your options.
The USPTO website has a great deal of useful, basic information regarding trademarks and the application process. It is a good place to start if you have trademark-related questions.
Jennifer Liotta is an attorney and founder of Tanager Legal, LLC. She counsels clients in intellectual property, licensing, startup, privacy, general corporate and dispute resolution matters. Prior to launching Tanager, Jennifer practiced at a large Atlanta law firm and managed IP at Georgia Tech. She is an Emory Law alumna.