The hazards of skimping on trademark research
18 April, 2018
It’s essential to do your trademark homework before you hit prime time.
You’ve come up with the perfect brand name for your product—it’s catchy, clever, and memorable. You waste no time affixing your trademark to your product packaging, signage, website, advertising, t-shirts, the works. You launch your new brand and your customers respond just as you knew they would—by opening their wallets. There’s just one little problem: another company is already using the same trademark. What starts with a formal cease and desist letter ends with your having to toss out your new brand—and all the expensive marketing you’ve invested in. Now you’re back to square one, scrambling for a new trademark.
Far-fetched scenario? Unfortunately, it’s all too common.
Just ask the owners of Hardihood Brewing of Colorado, who were forced to change their business name to Maxline Brewing just one day before their grand opening due to a conflict with an existing trademark.[i] Ditto another beer company, Absolute Threshold Brewing, which renamed itself after a trademark dispute with Absolut Vodka.
An organic juice bar in Denver called Sol Kitchen found itself embroiled in a trademark infringement lawsuit brought by the company that owns SOL Cocina, a California restaurant looking to open a location in Colorado. The owners of Sol Kitchen said the allegation of infringement “came as a complete shock.”[ii]
New Orleans-based clothing company Monkey Hill Apparel was forced to change its business name after two years in the marketplace when a clothing company with a similar name complained. The owner of Monkey Hill said she had no idea the trademark was already registered to someone else.[iii]
What’s missing from all these stories? Three words: effective trademark research.
In many cases, business owners fail to do a trademark search at all. Or they think a simple web search is sufficient to confirm that their trademark is available for use. But web search engines are not designed for trademark research. Their algorithms are not intended to assess trademark similarity for legal purposes.
Other business owners may believe that a search of the trademark office online database is sufficient due diligence. But these databases are not comprehensive, and they do not identify trademarks that are in use in the marketplace but not registered. This is critical, because in some jurisdictions—including the U.S.—the first party to use a trademark in commerce may have prior rights to that mark, even if it isn’t registered.
Think small businesses fly under the radar? Think again.
If your business has a website, your brand is visible globally. Smart brand owners are actively watching the web for instances of potential infringement of their trademarks. If they come across your mark, you can expect to hear from them…or from their legal counsel.
So how can you search your trademark to minimize the risk of infringement?
Check out these helpful resources: