Launching a new brand is exciting and exhausting, with hours upon hours devoted to honing every feature to get it just right. But, many marketing professionals and other business leaders miss a critical step in the process that can render all of their efforts meaningless. That step is to check the trademarks, service marks and other marks used to make sure they are protectable under trademark law and will not violate a competitor’s marks. Without it, the company risks wasting valuable time and resources, and can even be exposed to a costly lawsuit. Here’s six simple steps to take before launching a brand to help avoid those pitfalls.
1. Design a Unique Mark
First, design a mark that’s unique in the marketplace and does not merely describe the product associated with it. While a descriptive or generic mark might be ideal for product association purposes, it will not be a “strong” mark for legal protection purposes. This idea means it will be difficult (if not impossible) to stop competitors from using a mark that’s the same or confusingly similar. Put another way, the mark will have little to no value under trademark law. That’s because trademark law seeks to prevent companies from monopolizing words the public uses to identify and describe the goods and services associated with it, which is seen as an unfair way to stifle competition.
2. Gather Some Alternatives
Second, have some backup options ready to go. Try not to fall in love with a mark until you are confident that it’s legally protectable and will not conflict with others’ trademark rights. Often, business teams have to try out multiple mark options before settling on one that is both strong (for legal protection purposes) and low risk (with respect to competitors’ conflicting marks). Having backup options will save you time and make a surprise conflict less frustrating.
3. Identify Goods & Services
Third, specify the goods and services that’ll be sold under the mark. Typically, legal protection will only extend to the markets for goods and services that the mark is actually used with. Trademark rights will not protect against someone’s use of the mark with unrelated goods and services, except in limited circumstances. So, you want to be specific here and then use the United States Patent and Trademark Office’s (USPTO) Trademark ID Manual to identify which classes those goods and services fall into. Doing so will help you refine your search for conflicting marks and complete a federal trademark application (if desired).
4. Run a Quick Search in TESS
Fourth, run a quick check using the USPTO’s Trademark Electronic Search System (TESS). This is a database you can use to find any conflicting federal mark registrations or registration applications, which may present hurdles to registering your mark and may make using that mark too risky (regardless of registration). Although searches can get quite complicated, start with some basic queries to see if there’s any obvious red flags. Make sure to use alternative spelling for words to cover as much ground as possible. Running these simple searches will help you spot obvious disqualifiers (and eliminate mark options) before reaching out to an attorney or purchasing a software-based search report for a more thorough search. Keep in mind, however, conflicting marks do not have to be exactly like your mark to act as disqualifiers, because trademark law has some fuzzy standards for what’s confusingly similar.
5. Consider Registration
Fifth, consider federal registration for the mark to get nationwide protection and other important benefits. Federal mark registration is usually the most cost-effective and easiest approach to getting far-reaching protection for a mark. The application itself is straightforward and involves reasonable filing fees, which are low compared to a typical overall rollout budget. For example, standard filing fees for an online federal mark registration application run $225 per class (of goods/services), and choosing only 1-3 classes is common. In addition, the registration process provides a good opportunity to see if another company will contest the use of the mark before you invest too much time and money promoting it. But, beware. There are circumstances that make seeking a federal registration a bad idea, such as when registration is likely to tip off a competitor with a superior claim to the mark that you’ve been using it in commerce for a long period of time. So, federal registration is not always a safe bet.
6. Line Up an Attorney
Finally, get an attorney involved in the process. Although a business can technically submit a federal mark registration application with the USPTO without an attorney, there’s some problems with doing so. One of the most troublesome problems is that the application can quickly turn into a full-blown legal dispute. For example, the USPTO’s examining attorney may cite some legal reasons for denying the application or a competitor may contest the application in a formal proceeding. With strict response deadlines, these scenarios are difficult to navigate without an experienced attorney, especially if you’ve already invested a lot in the mark and don’t want to give it up without a fight. Besides, many attorneys charge a relatively small fee for reviewing and filing the application, so getting them involved early will be relatively cheap (at least when compared to engaging someone after a dispute arises and deadlines are fast approaching). Most importantly, getting an attorney involved early will give you access to legal advice that will help to avoid costly disputes to begin with.
In summary, the six basic steps discussed above are some important steps to take before launching a new mark. These steps will help you lessen the risk that you’ll have to rebrand later (after already spending much time, money and effort promoting the mark). They’ll also help to lessen the risk of a costly dispute with a competitor who uses a conflicting mark. Such benefits far outweigh the minimal effort required.
Remember, this article just hits some basic highlights for potential legal issues (for educational purposes only) and is not a substitute for professional legal advice. You should always consult with an experienced attorney to see if these tips are right for your situation. Every situation is unique and will likely involve important facts not considered here.
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– Parker (the Tech Lawyer)
© 2021 CoreServe Legal, LLC.
Disclaimer: This article is for general information purposes and is not intended to be—and should not be taken as—legal advice. You should consult with an attorney before acting on any information contained in this article.