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Trademark Toolkit: An Educational Resource

trademark toolkit from spear ip

It’s no secret that trademark is one of my favorite topics. Trademarks are everywhere we look — from your Apple TV home screen to your Pinterest feed. In this trademark toolkit, we’ll talk about what exactly is a trademark, the nitty gritty on trademark searches, and things like domain names and trademark registration. Of course, this is educational. If you have a specific legal question, please reach out to a trusted attorney before making a decision.

What is a Trademark

What good is a trademark toolkit without a primer on what a trademark is? A trademark is a word, symbol, or phrase that identifies the source of a product or service. It can even be a non-traditional thing like a sound — you know, like that NBC chime that’s popping into your head just because of this sentence.

The NBC chime is a registered “sound mark” trademark.

When a consumer sees a particular trademark, she automatically associates a certain quality with that brand. That association is based on her experience with the brand. Trademark law ultimately exists to protect the consumer from confusion. How could you make an accurate purchasing decision if there were more than one Jeni’s in the ice cream section, or more than one Better Made in the snack section?

{Trademark Toolkit Checkpoint: What trademarks are reflected in my business?}

Trademark Search vs. Google Search

A Google search is not the same as a trademark search. (Although, it is better than nothing!) A trademark clearance search is a process that looks into similar trademarks used in connection with similar products or services. Yes, S-I-M-I-L-A-R. That means it could be the same word, but spelled differently. Or a related, but not identical, industry.

A thorough search should include the U.S. Trademark Office database and the broader Internet. Remember, a mark doesn’t have to be a “direct hit” to be a problem. If two products are kinda-sorta related, but travel in the same marketing channel, those could be considered too likely to “cause confusion” in the marketplace to coexist.

When I conduct a trademark search, it’s about a 3-ish hour process. I pull all of the results and do an analysis with three main questions in mind:

  1. Does the mark seems likely to be registered without any issues (like rejection by the USPTO)?
  2. Are there risks posed by other trademark owners if my client were to proceed in using her mark, even if it’s unregistered?
  3. Is the mark protectable?

By the way, How Do Domain Names Fit In With Trademark Availability?

It’s a good sign if a top-level domain name is available! But searching for and purchasing your domain name are not the same as a trademark search. 

{Trademark Toolkit Checkpoint: Have I had a thorough trademark search done for my brand name?}

The Benefits of Registration

There are a ton of benefits to registering a trademark.

First, only the owner of a federally registered trademark can use the ® symbol. (So, that’s cool).

Federal registration creates a public record of the information in the trademark application.

Owners of federally registered trademarks also benefit from certain remedies. (Think of a remedy as something you ask for because of the harm that’s been done to you, like money or an injunction).

Owning a federally registered trademark entitles you to special damages. Those include a) the ability to block imports that infringe upon your mark (a great one for fashion brands), b) the potential to recover triple or “treble” money damages for infringement, and c) the ability to file a lawsuit in federal court.

{Trademark Toolkit Checkpoint: Is trademark registration right for my brand?}

Post-Registration

Nobody likes to be a bad guy. I get it. The words “cease and desist” can sound scary and official. But policing a trademark is important to maintaining your rights. In other words, registration is not the end-all, be-all. You have to be diligent in making sure others aren’t getting all up in your business (literally) by using a trademark similar to yours in connection with their similar business. Trademark monitoring provides you with an update on any newly-filed applications or new websites (depending on the package you select). At the very least, you can set up a few Google alerts using your brand name and your industry.

{Trademark Toolkit Checkpoint: Have I looked into trademark monitoring or set up a Google alert for my trademark?}

What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online. 

Using “Cheap” Online Legal Services for Trademarks

the temptations and shortcomings of online legal services

So, you’re thinking about registering a trademark. You have worked hard to choose a mark that distinguishes your product or service from the competition. Now, you’re wondering if it’s possible to protect it. “Cheap” online legal services like Rocket Lawyer, Legal Zoom, and Trademarkia sure are tempting. 

Continue reading “Using “Cheap” Online Legal Services for Trademarks”

You’re Not Cheating the Trademark System

You're Not Cheating the Trademark System

Rats. You spent so much time selecting your name, and you can’t use it. For one reason or another, you and your attorney have determined that you have to change your brand name: you received a cease-and-desist letter in the mail that contained some pretty valid claims; your application to federally register your trademark was rejected; or a trademark search revealed a third party that started using a similar name before you did. “But I love this name!” you proclaim. “I brainstormed, worked with a marketing company, surveyed my friends, Googled, and I purchased a domain name.” What’s a trademark owner to do?

Continue reading “You’re Not Cheating the Trademark System”

IP Planning For A New Business

IP Planning For A New Business

You’re starting a new biz. Congratulations! No doubt you’ve spent time figuring out your logo, the design of your website, etc. Have you thought about your intellectual property and doing some IP planning? It seems a little chicken-before-the-egg (do you register first or launch first?). And, yes, it’s a little less “sexy” than web design. But, IP planning for a new business could be one of those things where your future self will thank you if you actually sit down and do it.

Continue reading “IP Planning For A New Business”

The Ultra-Important Trademark Search

The Ultra-Important Trademark Search

You’re not thinking about a trademark search.

You’ve got a GREAT idea. Excellent! Have you given any thought as to what you might call it? The name by which everyone will know this great *thing* you’ve created? In an ideal world, you will have retained the services of an attorney to perform a trademark search prior to choosing a  name. Spending a ton of money on merchandise, logo design, and labels only to find out later that someone else beat you to it? Not something that any business owner wants to deal with. Why oh why didn’t you think about a trademark search?

What’s the purpose of a trademark search?

The main purpose of a trademark search is to ensure that you, the brand owner, will not be infringing on any other person or entity’s rights if you use your brand name in connection with your goods or your services. The other purpose of a trademark search is to anticipate, to the extent possible, whether the mark is likely to be accepted by the Trademark Office if you choose to register it.

A thorough search will look for marks similar to yours used in connection with products and services similar to yours. A trademark lawyer will check sources such as the United States Patent and Trademark Office, Google, state trademark registries, and trade-specific websites. Oftentimes, trademark lawyers have special software that pulls marks that look or sound similar to your trademark. (The Trademark Office looks for marks that are similar to yours in sight and sound, too.) This special software also helps to identify the existing marks that carry the most risk.

Ideally, a search should take place before your launch, but that’s not always the case. Though every scenario varies, depending on the facts, it is usually best to have a trademark search performed so that you don’t find yourself spending more money on something that could have been prevented. In other words, spending a little money now could save you from spending more money — and a big headache — from dealing with attorneys’ fees, a rebrand, a cease-and-desist letter or a trademark infringement lawsuit later.

What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.

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