In a rush of excitement to launch a new product or business, it’s easy to forget that selection of a trademark is not the same as naming a baby. Selection of a great trademark requires investigation.
What then is proper investigation? A trademark investigation usually means paying a professional search firm $600 or more for a complete search of existing and pending U.S. trademarks, all 50 state registries, trade directories, and now domain registries.
If someone with the name “Tiffany” wants to start a jewelry named after herself, she will certainly run into more than a few trademark walls.
In the case of a famous mark like Tiffany, it is obvious the trademark is already owned by a third party, so anyone would think twice before opening up a new jewelry store using Tiffany. However, just because a common term is be used by many other people does not mean it’s free for you to use as your brand. More important, the fact that a term is in common use may be an indication that the term is a bad choice and so weak it will never be a strong and protectable. Hence, an investigation is an essential step in the selection process.
Here are a few words of advice:
- Search within in your industry to narrow the field in an effort to eliminate terms already in use, including terms which are overused and common within a particularly trade or industry. The more uncommon a term within an industry, the greater chance of success you’ll have in selecting correctly the first time.
- A successful search is a wonderful road map, a guide to navigate the market for your product or service, and to refine and make better your initial selection, presentation, and even assists to formulate a strategy for proper registration.
- Ignorance is not bliss. Modern court decisions have held that failure to conduct a proper trademark investigation before adopting a mark can be used as evidence of bad faith when sued for infringement. In short, if you fail to search and are later sued, don’t count on claiming you didn’t know about someone else’s use to profess innocence.