Starting a new business is a complicated process with no shortage of pitfalls. While there are many books, guides, checklists, and other resources out there to help you get started, there is no “one size fits all” approach. You have to take the necessary steps all while avoiding common pitfalls. Trademark infringement is just one of those pitfalls to avoid. In this post, I will provide some tips on how to avoid trademark infringement.
What Is Trademark Infringement?
Trademarks are a form of intellectual property that make up a business’ branding. They typically consist of names, logos, and slogans used in connection with products and/or services. For example, you are probably familiar with the name Pizza Hut, the Nike Swoosh logo, and the slogan “I’m Lovin’ It.” These trademarks are all examples of extremely valuable intellectual property. However, you do not have to be the size of McDonald’s to have a valuable trademark. Every business has at least one trademark (its name) that is valuable to that business. As a business grows, invests in marketing, and has more and more customer interactions, its trademarks become more valuable as customers begin to associated the goodwill built up through their experiences with them.
Trademark law exists because we want consumers to be able to distinguish between businesses using trademarks. We do not want consumers to be confused about who they are buying from or what they are getting. Moreover, we want to prevent businesses from confusing consumers in order to take advantage of the hard work that competitors have done. For example, if I sell a smartphone and call it “iPhon” without an “e,” that would trample on Apple’s trademark rights and potentially steal a number of confused consumers. This is an example of trademark infringement.
Trademark infringement occurs when someone adopts branding (typically a name, logo, or slogan) that is likely to cause confusion with an existing trademark. When someone has trademark protection through common law use and federal trademark registration, they can and may take actions against trademark infringers.
How To Avoid Trademark Infringement
Fortunately, there are some simple steps that new business owners can take to dramatically reduce their chances of ending up in a trademark infringement dispute. The first is called a trademark search. There are several types of trademark searches, but they all involve looking for other individuals and businesses that are already out there using similar trademarks in connection with similar types of products and/or services. When you find someone doing something similar under a similar name, that may be a potential issue.
I mentioned that there are different types of trademark searches. The two most common and most helpful, in my opinion, are the common law and federal trademark searches. Common law searches look for others that may be using a similar trademark, but have not necessarily registered that trademark (with the U.S. Patent & Trademark Office). You can conduct a common law search yourself by going to the same places you would look for any business: Google, Yelp, Facebook, and other social media platforms.
While basic common law searches are relatively quick and easy, the nature of common law trademark rights is a little more complicated. Common law trademark protection is geographically limited. As a result, you might have multiple unrelated XYZ Hamburger restaurants all operating in different parts of the country. If you find a potential issue in your common law search, you may want to consult with an attorney to better understand what it means to you.
Next is the federal trademark search at the U.S. Patent & Trademark Office. This search can be conducted using the (free) TESS system. Searching the USPTO records is a great idea because, unlike with the common law search, if someone has a federal registration then they have trademark protection across the United States. That means if you adopt a similar trademark, you will be infringing regardless of where your business is located. If you conduct the basic TESS search and do not find a conflict, then you will want to have a trademark attorney take a “deeper dive” and verify that there are no potential issues with a more comprehensive search.
If the searches do not turn up potential conflicts, you may want to look at federal registration of your trademark. Having a federal registration can deter others from making claims of trademark infringement against you. Ownership of a registration is evidence of your ownership of the registered trademark, which is extremely useful to have!
Consequences of Trademark Infringement
If someone believes that you are infringing on their trademark rights, they may send you a cease and desist letter or even file a trademark infringement lawsuit against you. If that happens, a judge can order you to stop using your trademark and potentially award damages to the other party. Imagine how difficult and expensive it would be to have to rebrand your business. By conducting searches and registering your trademarks, you can help to avoid trademark infringement claims against you.
Need Assistance Avoiding Trademark Infringement?
Now that you know how to avoid trademark infringement, you will likely need professional assistance to help you with your own trademark protection. Please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
