Searching and Clearance

Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or some other type of entity. It makes no difference whether the entity is a for-profit or not-for-profit organization, and the size of the entity is also irrelevant. Your “brand” is your public facing identity by which you will be known and through which your reputation will be developed. The goodwill you develop in your “brand” will be one of the most important and valuable assets you own.

The first “brand” a new entity may adopt is its business name. This may be a formal corporate name obtained through a Secretary of State’s office and/or a fictitious business name, such as a trade name or a DBA. Regardless of which type of entity is adopting and using a new name, and regardless of whether the name has been cleared by a Secretary of State’s office, it is critical that an appropriate trademark search be conducted for the new name to ensure that it does not infringe upon the prior existing registered or unregistered trademark rights of a third party. Continue Reading Company “Branding” and the Benefits of Federal Trademark Registration

Written by : Susan Neuberger Weller

The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled “Call It What It Is.” The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names. As a trademark lawyer who has been practicing for quite a while, the substance of the article was not particularly new to me. However, many businesses who struggle each day to invent new company and brand names for their businesses, products, and services may find some inspiration and creative ideas from this piece. As the article makes clear, the naming process can be a very long road and it is better to start sooner rather than later. Moreover, once a new name is chosen, and has been fully searched and cleared by trademark counsel, it is strongly recommended that an intent to use application for the new brand name be filed promptly at the US Trademark Office to protect it at the earliest time possible.

So, roll up those sleeves and let the branding begin!

 

 

 

 As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search  for a new company name and for a new trademark cannot be overstated:

1. Any word in any language can function as a trademark depending on how it is used.

2. Every business has at least one company name, trade name, brand name, logo, or slogan it uses to advertise its goods or services, making it vulnerable to a claim of infringement if the use has not been cleared properly.

3. A Secretary of State’s clearance and registration of a name for a corporation or other business entity is NOT a defense to a claim of trademark infringement.

4. Unlike copyright infringement, trademark infringement can be innocent. Prior knowledge of a preexisting trademark is not required for infringement liability to exist.

5. Domain names alone do not create trademark or similar protected rights, but can violate trademark rights.

6. Marks do not need to be identical or used competitively in order to be infringing.

7. Famous marks and names should never be used even for completely unrelated purposes.

8. Unregistered common law marks are valid and fully enforceable in the United States.

9. There is no such thing as international or worldwide trademark rights. Trademark rights exist on a country-by-country basis. In most countries, the first to file a trademark application and obtain a registration owns the rights in that country. Use without registration is irrelevant. Foreign rights should be searched and/or applied for before any public announcements of expansion plans.

10. Trademarks are a use-it-or-lose-it asset. Unlike patents and copyrights, trademarks can exist forever if they are being used. Intent-to-use applications can be filed for trademarks for which there are plans underway but which may not be placed into actual use for, at least, four years.

A thorough trademark search is one of the best investments a company can make in a new endeavor. No one wants to invest time, money, and effort in a new name or mark only to find out later that all is lost, including  the initial  goodwill and reputation developed under that new name and mark.  So do not simply choose a new name or mark wisely, also search it well.