It takes three steps to register a trademark:
- file the application;
- pay the fee; and
- wait eight to ten months with fingers crossed until the registration certificate arrives in the mail.
That's all there is to it.
Except that none of those steps is particularly easy or cheap. Even the fee to register a trademark is four or five times more expensive than filing a copyright application.
Good Trademarks Add Value
Trademarks are invaluable assets for building a creative business, or any business for that matter. It’s good practice to register a trademark to help your company build its intangible value. A trademark is the identity of your business, your services, and your products. Once you have found a good one, you need to protect it from being used inappropriately by others. Filing an application to obtain a federal registration on your mark is a fundamental protection strategy.
The task of finding a good trademark is as important and as difficult as protecting it. You should find a good one before you invest in registration.
The Application to Register a Trademark
That first step—the trademark application—is, as Shrek would say, “Like an onion.” There are many layers that must be peeled away to get at the center. Those layers represent preparation. At the center of the onion, beneath those layers of preparation, is the application form itself.
The first layer of preparation when getting ready to register a trademark is making sure that the mark is available for use. The last thing you want to do is spend a significant portion of your marketing (and legal) budget trying to nail down a trademark only to find that you can’t use it. Jumping straight to the application without clearing the mark will only bring tears in the end.
You need to establish that no one else is using the mark that will be the cornerstone of your business or product launch. Those individuals or entities who thought of and started using the mark before you are called senior users. Senior users have superior rights. If senior users exist that makes you a junior user with inferior rights, or no rights at all.
I cannot tell you how many times I have been called by a client at the 11th hour and asked if it is okay to use a particular trademark or slogan. By the 11th hour, I mean that the marketing campaign is scheduled to start tomorrow or the product packaging is fully designed, the graphic artist paid, and the files are at the printer ready to be run. Clearing a trademark for use in a business or product launch, a major marketing campaign, or even a minor marketing campaign, is not something that can be done off-the-cuff. The process of clearing a trademark takes time and begins with a search.
The Importance of a Trademark Clearance Search
The purpose of a trademark clearance search is to eliminate the likelihood of consumer confusion between your proposed trademark and someone else’s actual trademark. It’s more than avoiding an infringement claim — it’s that you don’t want your company, products, or services to be confused with anyone else’s. It works both ways — clearance searches protect you and also, they protect you.
I outlined the benefits of trademark registration in an earlier post, Trademarks for Creative Professionals. In that post, I pointed out that having a federal trademark registration may entitle you to enhanced damages if you have to bring an infringement claim. The flip side benefit of having performed a trademark clearance search before applying to register a trademark is that the search protects you from those same enhanced damages (paying lost profits or attorney’s fees, for example). As I said, a clearance search protects you and protects you.
It's About the Risk, Not the Law
There is no statute that requires you to search and clear a trademark before you begin using it. The single and most important benefit to having a trademark cleared is that it reduces risk — the risk of being sued, the risk of incurring legal fees, the risk of having to abandon a marketing campaign, the risk of having to destroy or redesign products. There may not be a specific law I can point to, but there are cases that illustrate the benefit of running a clearance search before you use or register a trademark. Most of the reported cases involve big businesses that can afford to litigate the arcane nuances of trademark law.
Learn how to run a "knock-out" search. Filter through your branding ideas on your own. Decide about a trademark's viability before you invest in a commercial service or a lawyer's opinion.
One of the most well-known cases started when Gatorade ran a marketing campaign using the phrase “ThirstAid” without conducting a clearance search. It turns out that the mark was owned by another company. The case went to trial and the Quaker Oats Company which owns Gatorade was hit with a verdict in excess of $20 million — a percentage of the profits earned on sales from the ThirstAid marketing campaign. The verdict was reversed on appeal but the point stands — do a search.
I tried to hunt down an example using a creative or arts-based business (did you know that "Pull My Finger" is a trademark for plush dolls?) Most reported cases on clearance search issues deal with mega-conglomerate-types. It's the unreported cases creative entrepreneurs have to worry about. That's when trademark law is made in a lawyer's conference room after a cease and desist letter has been sent. The threat of protracted litigation forces the resolution, not the judge or the jury.
While there may not be a law that requires you to do a trademark clearance search, the trademark application makes you sign a declaration that to the best of your knowledge no one else has the right to use the mark you are applying for. You can only make that declaration after you have done a search.
Search Before You Register a Trademark
The best time to conduct a trademark clearance search is before the mark is used. But that’s not the only time a search is helpful. If you’ve only been operating your business locally and don’t already have a federal registration, run a search before you expand geographically. It can also be useful to run a search before changing or updating the style of your mark.
The next post in this series on trademarks will go through the trademark application in detail. In the meantime, prepare to register a trademark by peeling the onion. Run a preliminary search on the trademark you want to use. Satisfy yourself that it makes good business sense to take the next step in the trademark process.
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