Before Investing Start-Up Dollars, Do A Trademark Search Before Choosing A Business Name

Hello!

I hope all is wonderful! Below is a copy of an article I wrote for Black Web 2.0 that is getting great feedback. I hope this article is helpful!


Picture this…Some friends and I decide to start an internet business and we choose a catchy and SEO friendly name. We invest money into start-up operation costs. We purchase the domain name, legally incorporate, obtain business bank accounts, hire personnel, create a logo, and order marketing materials. We send out press releases and obtain investors. We are ready to go. We realize this is a hot concept, so we want to obtain trademark protection for the business name and identity. We hire an attorney to assist with obtaining trademark registration and he discovers the name is already trademarked by another company. Yikes!

Unfortunately, I see this scenario very often in my practice. When choosing a business name or identity during the start-up phase, most business owners simply do not think about trademark registration. However, in my legal opinion as soon as a business owner chooses a company name a trademark search to assess the availability of the name or logo should be done immediately. Taking this proactive approach can save a new business from wasting dollars on a name and/or identity they can not own. Furthermore, if a trademark search clears a business to register the chosen name, logos, or other brand identifying material, the business should immediately file for a trademark to claim ownership of the mark. Very often individuals tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!

Here are a few trademark search tips I recommend when starting a business and choosing a company name.

1. Do a preliminary search on Google to ensure that a trademark right has not been claimed in the company’s business name;
2. A preliminary search on Google will cost $0. However, Google will not find viable and valid trademark rights of companies that are not on the internet or do not have active advertising and marketing campaigns. To fully ensure your company is not infringing another trademark owner’s rights, a more comprehensive search can be done.
3. Hire a trademark attorney to perform a comprehensive search. A comprehensive search will include:

* A search of the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet.
* If you plan to sell your product or service in another country, you can also obtain an international search.
* The cost of a comprehensive search for a name only starts at $550.00. However a search performed for a logo and name, starts at $950.00. International Searches do require much larger fees.

There are several companies that perform comprehensive searches. Here are a few:

CT Corsearch.

CompuMark

4 Trademark.com

These companies gather the information but do not analyze it or ensure your trademark is not infringing. A trademark attorney can analyze the contents of the search and give you a legal opinion regarding the availability of your mark.

Why I Should Hire a Trademark Lawyer? Comprehensive Search Resources

Hello!

In my previous post, I discussed the number one pitfall individuals make when submitting a trademark application to the USPTO, which is not performing a comprehensive search. In this post, I will explain what a comprehensive search entails and provide a list of resources to conduct the search.

A comprehensive search will gather any information or trademarks that are similar to your trademark. This type of search will include:

A search of the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet.

In addition, if you plan to sell your product or service in another country, you can also obtain an international search.

The cost for this type of search for a name only starts at $550.00. However if you want a search performed for a logo and name, the cost is around $950.00. International Searches do require much larger fees.

There are several companies that perform comprehensive searches. Here are a few:

CT Corsearch.

CompuMark

4 Trademark.com


I hope this information was helpful. Please leave a comment if you have any questions.

Why I Should Hire a Trademark Lawyer?

Hello!

Welcome Back.

As I have previously stated, many of the clients I obtain are those who have tried to register their trademarks without the assistance of an attorney and the USPTO rejects their application. Consequently, I have started this series appropriately titled "Why I Should Hire a Trademark Lawyer" to address common questions or pitfalls many trademark owners commit when attempting to navigate the USPTO on their own. Today, I am going to discuss in depth the number one pitfall:

1. Not obtaining or performing an adequate trademark search.

A simple search on Google to determine whether a trademark name, logos, or taglines are in use by another party, simply will not do. If I submitted a trademark application to the USPTO, based on a Google Search, I would be sued for malpractice. This is a big big public misconception. There are thousands of viable trademark claims or rights that simply do not show up in a Google Search. Why?

a. Some businesses do not own a website,
b. Some business are operating under DBAs that search engines may not find,
c. Some businesses, do not do any active advertising or marketing

However, this list is not exhaustive. There are so many mom and pops that fall under this category. You would not know if they existed unless you hired an attorney or a search company to do a comprehensive trademark search.

Another misconception is that if a search is performed using the USPTO's trademark database, and the name is not taken, you are in the clear. WRONG. WRONG. WRONG. The USPTO's database only includes registered trademarks, not common law trademarks. A common law trademark right exists when one is the first to use the mark in their region, regardless of whether the mark has been registered with the USPTO.

Once the USPTO receives your trademark application, they will perform a comprehensive search and if your trademark is already in use, your application will be rejected. In addition, you will have to possibly choose another trademark name, logo, and/or tag line.

So before deciding to file a trademark application, consult with an attorney regarding a comprehensive search. It will save you time, headaches, and money.

In my next post, I will give an detailed example on what a comprehensive search includes.