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Make Your (Trade)mark!
In an ongoing series about starting a business, we begin—where else?—at the start, defining the fundamental terms of the game.
By Joann Yeh Litt
Published: Dec 01, 2007
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When you decided to open a lingerie boutique/doggie daycare hybrid, you knew you would have a lot to do: draw up business plans, get a loan, stock enough La Perla and Natural Balance. Pretty soon, though, everyone is buzzing about it, especially since you gave it the perfect, catchy name—Pet This! Then, out of nowhere, you get a cease and desist letter from a Las Vegas “business” threatening to sue you for using their trademark and you’re left with those three magical letters: W. T. F?
Where did your start-up dream go wrong? You forgot to protect yourself with respect to your trademark rights, and for small business owners, the more careful you are the better. You can’t afford to fight the Home Depots or the Starbucks of the world in court.
For starters, a trademark is a distinctive word, phrase, logo, domain name, etc., that’s used to identify the source of a product (you) and to distinguish your product or service from others. “Distinctive” means it has to be unique enough so customers recognize your product. “Strong Condoms” isn’t distinctive; “Trojans” is. Before settling on a trademark, it’s important to try to find out if anyone has already been using and/or registered the mark or a similar one for goods similar or related to yours.
The first thing you should do once you’ve come up with a name or mark? Go on the U.S. Patent and Trademark Office website and do a search on the Trademark Electronic Search System (TESS) to see if it has already been registered or has an application pending. If not, good, but you’re not in the clear yet. A trademark doesn’t have to be registered in order for someone to own the rights to it. Registering is an extra prophylactic.
Trademark rights are also established through use—just using it regularly and legitimately in your business establishes your right—so you also need to do a “use” search. You can do this on Google, but depending on how common a term your mark is, it could take a long time to go through the results, especially since one can also keep others from using and/or registering even similar marks for similar or related goods and services. It could be virtually impossible to search every possible permutation.
“Preliminary searching can be done by the business owner,” says trademark attorney Nate Garhart. “But once you determine that such a search doesn’t ‘knock out’ the mark, it’s almost always advisable to get a comprehensive search before settling on a trademark.” Nate recommends using companies such as Corsearch, Thomson & Thomson, or NameProtect to do these searches, which cost around $500 - $600.
This is nothing compared to the costs that you may incur if you choose and use a mark which someone else already has rights over. “Product packaging, promotional materials, etc., may all be rendered useless if a senior user learns of the junior infringing use,” adds Nate. But the worst case would be to catch a disease that’s a total pain to treat: a lawsuit.
Joann Yeh Litt was a self-loathing law firm hack before deciding it was more fun to write than to argue. She still argues quite frequently with family, however.
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