Save Money at the Outset by Following These Trademark Tips

June 2017

Whether you are a new business owner or an experienced entrepreneur starting up a new business, these seven tips will save you money when it comes to your trademarks and domain names.

1. Conduct at least an informal trademark search before adopting a company or product name. This search should be conducted on a federal level and should take into consideration both the similarity of the marks and the relatedness of the goods and/or services. For example, if you would like to open up a brewery and call it "Lost Arrow," but there is an existing winery called "Broken Arrow," this could be a problem. What you want to avoid is spending several thousand dollars on branding and advertising only to receive a cease and desist letter down the road.

2. Retain counsel to file your federal trademark application. From time to time, we inherit trademark files where the client has handled the initial filing on his or her own. Unfortunately, filing a federal trademark application does not simply entail entering data online but rather understanding the underlying law and rules pertaining to the registration of trademarks. For example, your date of first use must be the date on which the mark was first used in interstate commerce, and the trademark specimen must be appropriate for the goods or services covered by the application. You must make sure you are registering the correct mark for the correct goods/services. And finally, you need to make sure that the filing basis is correct. Once the registration issues, you need to calendar the first renewal, or else the registration will be canceled by the trademark office.

3. Think about (and budget for) foreign markets. The foreign filing deadline for claiming priority back to your U.S. trademark application is six months after the U.S. filing date. This six months can be important because most foreign countries are first-to-file (where the U.S. is first-to-use). This means that if someone registers your mark in a foreign country before you do, you will very likely have to rebrand in that country, which can be extremely costly and can lead to brand confusion. Consider your foreign markets early and conduct a cost-benefit analysis to determine where it makes sense to file.

4. Send cease and desist letters early if you discover an infringement of your mark. This may sound counter-intuitive, but if you wait until the infringer has opened his business, registered his domain name, launched his website, and invested in social media, that person will be less likely to want to resolve a trademark infringement dispute than if he had been notified of the problem early on. One way to catch would-be infringers is to monitor the U.S. Patent and Trademark Office database for similar marks.

5. When filing intent-to-use applications, be as comprehensive as possible in terms of the inclusion of goods and services. Once a trademark application is filed, you cannot add goods or services to it; however, you can always drop goods and services. We tell clients to look four years out and include in the initial filing all goods and/or services that you contemplate offering over that time period.

6. Similarly, you should not change your mark once it has been registered unless you are prepared to start from scratch with the trademark registration process. In terms of infringement, the infringing mark does not need to be identical to yours to support a claim of infringement, but in terms of registration, your mark must be identical to the mark that is on file with the trademark office. This includes both word marks and logos. If you have registered a word mark, you can change your logo as long as the words that are incorporated in the logo have not changed. If you have registered a logo, you cannot change that logo without losing the benefit of your federal registration.

7. Make sure that all domain names are registered in your own name. We often encounter situations where our clients' domain names are registered in the name of the website development firm. This is not acceptable, for two reasons. First, it will complicate matters in terms of trademark enforcement if your domain names are not owned by the same entity that owns your trademarks. Second, if you were to have a falling out with the web development firm, they could essentially hold you hostage by not releasing the domain names to you.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.