Before filing a trademark application or even before selecting a company name or a new product name, it is crucial to conduct a trademark search at the USPTO and a common law trademark search.
Coming up with a company or product name is not easy and can be painful. However, having to change a company name and rebrand because another company already has trademark rights to the name is not only painful, but can be extremely expensive and leave a company feeling defeated. To avoid any issue of infringing on a registered or common law trademark, it is crucial to conduct comprehensive trademark searches at the United States Patent and Trademark Office (USPTO) and at common law.
The home page for the USPTO Trademark Electronic Search System (TESS). Learn more about TESS here
Importance of Trademark Searches
A trademark owner with a federal trademark registration or with common law trademark rights can sue a company for trademark infringement. The best way to avoid a trademark infringement lawsuit is to search the relevant industry, and related industries, for any third party using the same or a confusingly similar trademark. It is important to search for both registered and common law trademark owners.
It is important for companies and people to not get too invested financially or emotionally to a trademark before conducting a trademark search. Sometimes even when a company knows they may have an issue, they move forward due to financial or emotional investments. Doubling down on a poor decision is not a wise choice when it comes to costly litigation where a bad result may lead to bankruptcy.
The safest way to conduct a trademark search is to contact a trademark attorney and heed their advice if they identify a potential issue. Ignoring the problem may work for a time, but if the issue pops up, it can lead to a trademark infringement lawsuit.
Cost of an Infringement Lawsuit
A trademark infringement lawsuit can be based on a third party's trademark rights based on a federal registration or common law, which is why it is important to search the USPTO trademark registers and common law.
The cost for a company to litigate and defend itself in a trademark lawsuit alone can be a substantial burden to a company that does not have money to spare. If a company loses a trademark lawsuit, they will be required to rebrand, and could pay any profits they made under the trademark, attorney fees and more. Making matters worse, the company will lose any goodwill they gained by using the trademark.
Rebranding alone could drive a company into bankruptcy. The company would need to take down any advertising with the trademark, including store signs, lettering on trucks, destroying business cards and letterhead with the trademark on them and more.
Ability to Expand
In some cases, a company may be within their rights to adopt a trademark even if it is already in use. For example, if a beer company in California adopts the same name for a beer as a Texas company that does not have a federal trademark registration, the California company likely will not be too vulnerable to a trademark infringement case. However, they would not be able to expand and sell their beer under that trademark in Texas.
Do you have any questions about trademark searches. Feel free to contact us for a free consultation or leave a comment below and we will do our best to answer your question.