By Jennifer Liotta
1. Start with a basic internet search.
A simple search of the internet can reveal a wealth of information about any trademark you’re considering. Is a third party using the mark in a domain name? Is a third party already offering goods or services under the proposed mark? If so, are those goods or services similar to what you’re planning on offering? If an internet search results in a large number of current uses, think about how much time, money, and effort you may have to spend to differentiate your use from already existing uses. Even if you can get trademark rights in a crowded field, you may determine that it isn’t worth pursuing from a business perspective.
2. Spelling and spacing does not matter for trademark rights.
Using an alternate spelling, adding spacing or combining words—these are not effective ways to distinguish one trademark from another. For example, using the mark “CrispyCream” for donuts would infringe the registered rights of Krispy Kreme. Consider this, and be sure in your search you try internet searches with alternate spellings of a mark you’re considering.
3. Using a branding company? Make them clear any trademarks they propose.
Branding and marketing companies are full of creative people who can help you name a company or product. However, oftentimes these creative folks will come up with great names—that can’t be registered or infringe existing registrations. Before hiring a branding consultant, understand what that company will do to research other uses of the mark (and very similar marks, such as those with alternative spellings). While a branding consultant cannot provide a legal opinion as to a trademark, consultants can certainly do some basic due diligence on other uses and provide that information.
4. Search the USPTO database.
Trademarks can be registered before being used in commerce. Such applications are known as “intent to use” applications, and might block a use you are contemplating, even when internet searches result in no relevant hits. A basic word search of the USPTO trademark database can tell you if there are any active registrations or applications on file for a given mark. Basic word searches are no substitute for attorney review or a full trademark search. However, such basic word searches can at least “knock out” exact matches. Be mindful that even an exact match may not bar you from using a mark for a different category of goods or services. When in doubt, consult an attorney.
5. It’s not just about the words.
Trademark rights can be secured for words, designs, uses of colors, or even sounds. Give some thought to how you are positioning a product and put together a file of any marketing materials, product designs, etc. An attorney can help you sort through your options, which may even expand beyond trademark into design patents and other forms of intellectual property protection.
Ms. Liotta brings a wealth of knowledge from more than eight years as a practicing intellectual property attorney, certified privacy professional, litigator, startup counselor, and deal-maker to assist a wide variety of companies. She helps startups become fundable by securing IP assets, counseling on privacy issues, and providing outside general counsel services. She helps small and midsize companies grow IP portfolios, draft and negotiate technology agreements, monitor and enforce IP rights, and does other corporate work.