Have you ever said to your attorney, “Oh, I know I should be thinking about my IP, but …?”
Trademark attorneys hear this all the time: you’ve already fallen in love with your brand name, and neither hell nor high water will keep you from using it.
Well, both hell and high water exist in the trademark world – they go by the names of “cease and desist” and “trademark infringement.”
Settling on a brand or product name or tagline before you consult a trademark attorney is pretty commonplace. Big companies do it, too. We’ve seen product and marketing teams put elaborate plans in place to move forward before checking with legal. Then their attorney has to say, “Um, you can’t use that name!” and it’s back to the (expensive and time-consuming) drawing board.
Here’s how to find your trademark – and keep it, too:
Remember that Descriptive Names Cannot be Protected
A lot of people settle on a descriptive name for their brand so people understand what it is they do (for example, Cybersecurity Software, Inc.). From a marketing perspective, picking a descriptive name makes perfect sense, because you don’t have to do much to educate the public about what it is your company does.
However, a descriptive name is granted little to no protection under trademark law, which leaves the door open to competitors who want to use the same or a similar name. Your best bets are either a fanciful name (using a common name for an un-related product or service, like Apple for computers) or a made-up word (like Google).
Ask an Attorney to Conduct Search and Clearance First
Entrepreneurs are savvy enough to know they need to protect their brand and trademarks when they have money, but in reality, you need to do this from the get-go. Take a step back from an advertising/marketing mindset, and ask a trademark attorney to conduct a search and clearance. Depending on the search results, he or she will help you pick the best mark possible for your brand.
You might have noticed I said an attorney should conduct your search and clearance. While it’s true that anyone can do a search, an experienced attorney is a far better choice than your intern.
Here’s why:
Attorneys know what they’re looking for, and they understand what search results actually mean.
Trademark law is very nuanced and very subjective, so if you don’t understand trademark law, then you don’t necessarily know what you’re looking for.
One common perception is that a mark is considered taken if it is exactly the same mark used for the same product. Let’s say you want to name your ice cream brand Yummy Tummy (note the space between the two words), but you find out that another ice cream brand is already using YummyTummy (no space between the two words). Even though the names are not exactly the same, under trademark law, they are the same.
Like I said, trademark law is tricky! Just seeing what the results are and looking at the mark aren’t always enough. A trademark attorney can dig deeper – and she knows when she should, based on the initial results she gets. She also knows how the Patent and Trademark Office views trademarks, will look at the overall consumer perception for the mark, and use her knowledge of the relationship between related goods and services to ensure a mark is indeed available.
In other words, a trademark attorney will save you a lot of heartache, time, and money.
A trademark attorney can also provide invaluable counsel on building your strongest and most cost effective brand portfolio. If you have a suite of branding elements, your attorney will help you come up with a portfolio-building strategy based on cost-benefit analysis and trademark legal principles. What should you apply for first and what can wait for later as your budget allows?
Trademark Protection Clears the Way for National Expansion
If you have plans to expand your business or startup nationally, registered trademark protection will help clear the way. Let’s say your headquarters are in Washington, DC, and you want to expand to New York City, Los Angeles and Chicago. Your brand’s trademark will be protected in all of those locations.
Plus, trademark protection will prevent other companies from using the same or similar name from operating anywhere in the US, and it will ensure you are building the strongest brand possible (at least from a trademark protection perspective!). After putting your heart and soul into building your brand, you need to do everything you can to protect it from others who’d like to ride your tailcoats to success.