“Do Your Homework” Applies to Trademarks and Service Marks Too!
Walter K. (Kevin) Roloff
Registered U.S. Patent Attorney and Intellectual Property Law Counsel
In a previous article, I described a necessity for “doing homework” regarding inventions and patent applications (It’s Back-To-School Time: Do Your Homework on Patents!) This same discipline applies equally to trademarks and service marks.
In that previous article, I explained that a patent protects a new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A trademark or a service mark, in contrast to a patent, protects a word, phrase, symbol, or graphic design – or a combination of them – that identifies and distinguishes a source of goods or services of one party from those of others. This article focuses on recommended homework concerning trademarks and service marks.
Select and use a mark only after doing a thorough clearance search.
Many new businesses are, understandably, eager to establish their brand and to establish their presence and place in a particular market. Sales are critical, so virtually all businesses seek to make a “splash” or create a “buzz” for their goods or services. To this end, a nifty logo or a catchy slogan is usually brainstormed into existence as a springboard for identification of the new business.
But this up-front activity is precisely where a business entity can, unwittingly, get into trouble. By “full speed ahead” adoption of that nifty logo or slogan without an awareness of potentially conflicting marks of others, the result could be an unprotectable mark, or a mark that infringes that of another, or both. A thorough search for pending and registered trademarks and service marks of others that are similar to the new mark, in the context of similar goods and services between marks, could spot a potentially problematic mark.
A basic trademark search should include comprehensive queries of both the trademarks database of the U.S. Patent and Trademark Office (the “USPTO”) and general internet search engines (e.g., Google). It is money well spent for you to engage the services of a skilled, experienced practitioner to do this searching and analyze the results.
Promptly file an application for federal trademark registration.
A trademark or service mark clearance search should not be the totality of your homework. Your trademark or service mark should be protected by way of federal registration. An application for federal registration of a mark filed in the USPTO, when compared to a patent application, is not difficult, time-consuming, or costly. Moreover, an application for federal registration of a trademark or a service mark may provide valuable feedback regarding the reliability of any clearance searching done up to that point as discussed above. In the process of federal registration of a mark, an examining trademark attorney in the USPTO will search for any earlier pending or registered marks of others that would conflict with and bar registration of the mark for which registration is being sought. If bad news needs to be delivered, it’s better to receive it sooner rather than later so that a different mark can be pursued without, hopefully, wasting too much time and expense.
This is vividly illustrated by the case of a small business that applied for federal registration of its catchy new trademark without first having done any homework, i.e. without performing a clearance search. Lo and behold, the examining trademark attorney at the USPTO found an existing, registered mark to an otherwise unknown business in another state, far from the applicant’s home base and thus “off the radar” in its market. This applicant was very disheartened to learn that its catchy trademark was unregistrable; and it was also bitterly disappointed to learn that the existence of its rejected application could be used as evidence of willful infringement by the prior registrant in the other state if the applicant went ahead with use of the mark anyway. So, an early application in the USPTO might have at least alerted this small business to the existence of a heretofore unknown but conflicting mark, in the absence of the homework of a clearance search.
In conclusion, you might have an extensive list of things to do to strengthen your business. But whatever your near- and long-term plans may actually be, I sincerely hope that you will put at the top of your list the homework recommended in this article when considering a new trademark or service mark for your business.
This article is general, non-specific information and does not create any attorney-client relationship between the author and the reader. Those interested in the information presented should seek the advice of their own counsel.
Copyright 2010, Walter K. Roloff, Esq. All rights reserved, worldwide.