The importance of trademarking a brand name usually doesn’t become evident until it’s too late and your brand name has been hijacked. Or worse, you are accused of hijacking someone else’s trademark! Most people think trademarking a name is a costly, cumbersome and complicated process that involves a throng of lawyers, but that’s not necessarily the case. While using a lawyer is always advisable, a smart and lucky marketer can do most–if not all–of the legwork himself, which will definitely lead to better results and at least decrease overall legal fees. Here are some pointers and a step-by-step guide to filing a trademark in the US.
Start with a Full Search
Most marketers are eager to jump right into their work. They come up with a great name that highlights the benefits of their product or service, is easy to pronounce and spell, and easy to remember. And they then start using ‘their’ brand name without much research beyond the typical market research beforehand. Or if they do perform a search, it’s limited to a Google search or a search to determine if the URL they want is available. While a trademark isn’t necessary to start using a name, it does provide protection from infringement. If someone else starts using the brand name you have worked hard to build, a trademark provides legal recourse in getting them to cease and desist. But that works both ways; It provides you legal recourse (cease and desist, sue for damages, etc.) if someone else starts using a brand name you worked carefully to build, but it can also bite you in the rear if you start using a brand name (wittingly or unwittingly) that someone else has filed and protected.
If you start using someone else’s trademark name and are forced to halt use and/or use another name, you can find yourself neck deep in legal costs, reputational damage, operational costs to update all your marketing materials and just a general marketing nightmare as you scramble to rebrand. These risks may be manageable, especially if you are considering a new introduction or a small sub-brand, but if you are considering your overall brand, this can be an important consideration. Many companies fail at rebranding even when they have spent a lot of time and money in strategizing and planning, so being forced to quickly rebrand by the seat of your pants most likely isn’t going to end with the best results.
The first step to avoid this is to do a quick search using the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS). This free online tool is pretty basic and not all that intuitive the first few times you use it, but after playing with it for a little while, it becomes pretty easy.
You can make your search as broad or as narrow as you want. You can include singular or plural uses of the name (i.e. Coke and Cokes), or look just for “live” registrations (trademarks that are currently protected) or “dead” registrations (names that were once trademarked, but for whatever reason the trademark owner has allowed the trademark to lapse and are now considered “abandoned”). You then insert the term you are searching, and you have the option of limiting your search to trademark owners (if you want to see if a certain person or corporation owns a mark), search by serial number (if you want to verify a mark) or search by term.
You’ll most likely encounter quite a few results/hits, but don’t worry. The next step is to dig through those results and determine which ones are used for a product or service similar to yours and then decide if they are ‘confusingly similar.’ Then, just as a double check, look up those serial numbers in the USPTO’s Trademark Application Registrations Retrieval (TARR) system to make sure the info is correct and get the most current status of the mark. If you did want to use a lawyer, this is the step where he is most useful because you can ask your lawyer to provide a memo or letter stating whether in his opinion the mark is ‘confusingly similar,’ the legal criteria for deciding if infringement has occurred, or if it not. This letter may become useful down the road to thwart a frivolous lawsuit or limit damages if someone is successful in suing you. It shows that you took precautions to avoid infringing on someone’s mark and obtained a legal opinion before proceeding, so your actions will not be deemed an ‘negligent.’ Of course involving a lawyer will cost money and take some amount of time, so I would only focus on the really problematic marks (if any) that may be identified. If too many conflicts arise or you don’t want to involve a lawyer, I would suggest considering a more ‘available’ mark.
“Marketing” seems to mean different things to different people. Some think of Ron Popeil and late-night infomercials, while others may think of the circulars and coupons they get in their Sunday paper. Many also think of the spam in their inboxes and the junk mail the mailman delivers every day. In reality all these views are correct, but marketing is much, much more.
Marketing involves selling products and services, but that doesn’t mean marketing is limited to sales activities. The American Marketing Association defines marketing as “the activity, set of institutions, and processes for creating, communicating, delivering, and exchanging offerings that have value for customers, clients, partners, and society at large.” Sounds impressive, but what does that really mean? This definition is chocked full of information, so let’s break down each component of the definition.
The purpose of this blog/site to discuss the marketing we see around us. Every day we are bombarded with thousands of marketing stimuli, some done well and some not so well. By examining these messages and their impact, we can learn how to become better marketers ourselves.
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