You don't look before you leapMISTAKE #3
Respecting the trademark landscape
We’ve talked about automatic trademark rights versus more powerful registration benefits. Now it’s time to talk about how to make sure you’re not infringing on anyone else’s trademark rights.
I can’t stress how important this is: you need to respect other brands and their trademark rights. If someone else has an active or pending trademark registration similar to yours, you want to be aware of that. ESPECIALLY if you’re still in the idea phase of your branding and want to identify potential trademarks that aren’t already “taken” so to speak.
Google searching and buying up domain names is great and all. But you need to check the trademark database first or else you’re asking for trouble down the road.
Don’t forget to run a strong search
You may be familiar with this trademark database already. If not, here’s a quick summary to bring you up to speed.
The United States Patent and Trademark Office (AKA the “USPTO”) has an online database where you can find trademark registration filings. It’s completely free. When you run a search for a specific word or phrase, you’ll see a results page for every application that matches your search. The database will indicate whether the trademark is registered or not, if it’s still pending or has been abandoned, and if there’s a dispute going on with it.
This database is a pretty amazing tool. But lots of business owners get confused, misled, or tripped up at this point.
When you run a trademark search, there are three big traps you can fall into:
- Analyzing the results is tricky. What does “live” or “dead” mean? What if you find your trademark listed but the company sells something different? How different is a words-only trademark from a logo trademark? And how significant is it that a similar trademark is in a different “class” as yours?
- It’s not just about the database. In order to have strong trademark rights, your brand needs to be distinctive. If the name is pretty generic or just describes what your business does, then that really weakens your rights. Even if you don’t see your trademark listed, that doesn’t necessarily give you the right to have “dibs” on your brand.
- Don’t ignore similar names. As great as the trademark database is, the search functionality is pretty basic. It often requires running multiple advanced searches to make sure you’ve located all similar trademarks.
Out of these three risks, the third one tends to cause the most trouble.
Watch out for confusingly similar trademarks.
It’s a blessing and a curse at times, but a trademark registration comes with pretty WIDE coverage.
When you secure a federal trademark registration, that’s a BIG deal. It means that you have exclusive rights nationwide to that trademark.
But there’s more.
It also means you have exclusive rights to anything “confusingly similar” to that trademark. And what might be considered “confusingly similar” is broader than you think.
If someone starts using a business name, logo, slogan, etc. that is similar to yours — even if it’s not the exact same — they could still be infringing on your rights.
That’s because trademark infringement boils down to one thing: a likelihood of confusion.
If someone knows your brand and sees this other brand, is there a chance the person might think the two are related and coming from the same business? Or that you two are working in connection with each other?
This is awesome news for the owners of registered trademarks. They get to enjoy these expansive trademark rights.
But if your trademark isn’t registered, this presents some serious challenges.
You want to make sure that your respecting the existing registrations on the database.
And not just any that are exact matches of your trademark.
Why a simple search ISN’T ENOUGH
You need to run a more comprehensive search so that you find trademarks that the trademark office might consider confusingly similar.
I’m stressing this point because it matters. One of the biggest reasons for a trademark application to be refused is because the trademark office concluded it was too similar to an existing trademark.
If there are existing trademark registrations that will likely prevent you from securing that registration, you don’t want to waste all that time, money, and energy on an application that’s doomed to fail anyways (the fees are not refundable).
And yes, this is why Indie Law ALWAYS runs a comprehensive search before submitting a trademark application for our clients.
Failing to understand the importance of a trademark clearance search — and why it should be comprehensive — is one of the biggest mistakes a business owner can make.
But there’s one last mistake that’s bigger than all of them. Click below to find out what it is.