Why You Should Do a Trademark Search BEFORE Website and Graphic Design?May 02, 2021
You’ve got your branding in place. You’ve launched your website. You’re sharing gorgeous graphics on social media.
And then you get a cease-and-desist letter that alleges you’re infringing on someone else’s trademark rights. AND they’re asking for you to pay damages. A lot of damages.
Talk about a punch to the gut, right?!
If you had just done a trademark search BEFORE committing the time and money to your website and graphic design projects, you could have avoided the huge headache of a rebrand.
Maybe you think it won’t happen to you. But how can you be sure if you haven’t completed a trademark search?
Before I jump into an explanation of what a trademark is, the benefits of trademarking your brand, and why trademark searches are key, know that everything I share is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. You should chat with an attorney in your area to make sure you’re taking the right steps for you and your business. Capisce?
What is a trademark?
A trademark is any word, name, symbol, or graphic used in commerce to indicate the source of a product (a service mark relates to a service – but since trademarks and service marks are handled similarly under US law, I’m lumping them together as trademarks for discussion purposes in this blog post).
Trademarks help to ensure consumers aren’t confused by 2 different products or services. And as a result, they help you as an online business owner protect your brand integrity. Because they confirm you’re not infringing on someone else’s brand AND protect your brand against copycats.
You can trademark everything from your business name, service or product name, podcast name, blog name, tagline, and even your logo.
And while individual states provide both common law rights and trademark registration, federal trademark registration provides the broadest protections. Because instead of being limited to one state - federal registration provides legal protection in all 50 states.
The benefits of trademarking your brand
The biggest benefit of federal trademark registration is that you can enforce your exclusive rights to the registered mark across the US.
But other important benefits include:
- Use of the ® symbol to alert potential infringers of your registration;
- The ability to sue for infringement in federal court;
- Recovery of attorney’s fees and damages if your infringement lawsuit is successful;
- The ability to file your registration with U.S. Customs to prevent importation of infringing foreign goods;
- An easier process registering your trademark in foreign countries; and
- A valuable asset for your company.
Federal registration gives you full statutory protection for 10 years – and then you can continue to renew indefinitely, so long as you file the correct forms and continue to use the mark.
And while the benefits of trademark protection for your online business are impressive, it’s important to conduct a trademark search before you even settle on a name for your business, product, or service so that you can ensure you’re not building your brand on borrowed ground. Because businesses that have gone through the hoops of federal registration are more likely to take the steps necessary to protect their brand from others who could create a likelihood of confusion for their clients and customers.
A trademark search is key!
The magic words in trademark law are “Likelihood of Confusion” – are two marks so similar that a consumer will likely be confused about the source of the product or service? And to make that determination you have to look at the similarity of the marks themselves AND the relatedness of the goods and services at issue.
For example, Dove (chocolate) and Dove (soap). Or Delta (faucets) and Delta (airline). The same names, but completely different products. And all registered trademarks.
A trademark search is key to determine any potential risks or liability issues associated with the name you’ve chosen for your business, product, or service.
You can do your own initial “knockout search” when you’ve selected a name to make sure it’s not already taken.
Search social media sites.
Poke around on Google.
Research with your Secretary of State for corporate and trade name filings.
Search on domain hosting sites.
Head to the United States Patent and Trademark Office (USPTO)’s Trademark Electronic Search System (TESS) – you can conduct your own basic word search to see if there are any current (or “dead”) registrations that are similar to your chosen name.
And make sure you’re not just searching for exact matches. You also want to include:
- different spellings (including phonetic similarities – things that are spelled differently but sound the same – think easy and EZ),
- misspellings, and
- permutations of words.
Remember that “a likelihood of confusion” is the test so if it’s similar enough, there could be an issue.
At the end of the day, no one can be 100% sure no conflicting marks exist. But you can make sure there are no exact matches. And then work with an attorney like Nicole Cheri Oden Law, PC for a more in-depth search and lockdown your brand with federal trademark registration.
***Heads up - this blog post is an attorney communication under Rule 1-400 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.***
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