This blog post is the first installment in a six-part series on brand protection strategies.
Intellectual property (“IP”) is one of the most valuable assets of a business. These assets are the primary means for a business to differentiate and distinguish itself in a crowded marketplace, grow brand recognition, instill loyalty and consumer confidence, and generate income through licensing and other controls placed on their IP by third parties.
The value of IP assets also play an important role when purchasing or selling a business or raising funds.
IP assets often include:
- Trademarks – product, business and brand names, logos, slogans and designs.
- Tradename – a name under which a business typically advertises and presents itself to the public, as opposed to its registered or legal name. Tradenames often consist of or include trademarks.
- Domain names – distinctive web addresses comprised of a website and domain extension, such as “.com” or “.net.” Domain names often include or incorporate trademarks or tradenames.
Be Strategic
Numerous brand protection strategies exist to protect IP assets. It is critical to consider timing, or when to implement a particular strategy.
A business should not invest a significant amount of time and money in branding before determining that its planned trademark use does not infringe on the IP rights of another business. Clearing a business, brand or product name prior to launch can avoid costly and sometimes irreversible damage to your bottom line.
A business that unwittingly adopts an infringing trademark may find itself spending significant amounts to rebrand, cease sales of infringing products, and destroy infringing inventory.
Conversely, infringement of your businesses’ IP assets can weaken or dilute your brand and name, ruin your businesses’ reputation, and divert sales resulting in lost profits. The more proactive a business is in implementing brand protection and enforcement strategies, the better.
Brand Protection Strategy #1: Conduct a Trademark Clearance Search
It’s important to conduct a clearance search early in the branding process. Ideally, this is well before the trademark has been used and your business has invested significant time and expense in the mark.
Conducting a clearance search before filing a trademark application with the U. S. Patent and Trademark Office (USPTO) will better inform you of the odds of success of your application, whether you should consider alternative marks, and whether you should even proceed with filing an application in the first instance.
In the U.S., trademark rights are based on priority of use. This means the business (or individual) to first use a mark in commerce to sell goods or services will typically be considered the rightful owner of the mark.
The goal of conducting an initial clearance search is to determine whether there are similar trademarks already in use with the same or similar classes of goods and services at issue that could pose a roadblock to your business’ planned use of a mark. Federally registered trademarks, state registered trademarks, and common law use of trademarks (use of marks that are not registered at either the federal or state level) can all pose significant hazards for a businesses’ planned use of trademark.
Types of Clearance Searches
The “knockout” clearance search
Clearance searches are not a one-size fits all proposition. The most basic clearance search is generally termed a “knockout search.” Often, this is the most cost-effective first step in mitigating risk in brand development and planning with respect to trademarks.
Generally, a knockout search involves a limited, quick search to identify any third-party federal pending trademark applications and live trademark registrations on file with the USPTO that would pose an obvious problem to the trademark use.
Frequently, the scope of a knockout search can expand to include a limited review of common law uses of a trademark that might pose significant risks to use, registration, and enforcement. While common law trademarks do not enjoy the broad protections afforded federally registered trademarks, they can still pose significant risks.
For example, common law trademark use in a certain geographic area can sometimes prevent the owner of a federally registered mark that is a senior user from using their mark in the same geographic area. It is advisable to seek legal advice to understand and evaluate the risks and complex legal issues that common law trademark use can pose to a planned trademark use or to the use of a trademark that is already registered.
The comprehensive search
Businesses can also conduct a comprehensive trademark clearance search. This can be undertaken after or in lieu of a knockout search, depending on the circumstances and planned use of the mark at issue. Because comprehensive searches are more in-depth and time consuming, they are also more costly than a knockout search.
Factors that can weigh in favor of performing a comprehensive search include:
- Use of a mark nationally or in a large geographic area;
- Significant investment in the mark; and
- Whether the mark entails a core business name or brand such that rebranding would be impossible or cost prohibitive.
As indicated by the name itself, a comprehensive search entails an extensive search of all existing trademark uses of any same or similar marks, including federal and state registrations and common law uses, and including marks that are similar in appearance and sound. Comprehensive searches can sometimes be targeted towards a particular industry. After the comprehensive search is conducted, firms will usually provide clients with a detailed analysis of the search results and advice on next steps.
Conclusion
The importance of an early trademark clearance search cannot be underestimated. An experienced trademark attorney can tailor and conduct a trademark clearance search to fit your needs, analyze and interpret the search results, and provide valuable insight and guidance on next steps. Counsel can also advise whether it is prudent to continue with a planned trademark use and federal application.
As an attorney that concentrates in trademark and brand protection, I regularly conduct and provide strategic advice on trademark clearance searches and handle USPTO trademark application filings and all other aspects of trademark prosecution, including responding to USPTO office actions. I also handle trademark infringement litigation matters and proceedings before the Trademark Trial and Appeal Board.
Please reach out to me if you would like legal assistance and advice in any of these areas.
In the next installment of this series, the author will discuss federal and state trademark registration.
Notice: This content is for informational purposes only and does not constitute legal advice. You should not rely upon this information for any purpose without seeking legal advice from a licensed attorney familiar with your particular facts and legal issues.
