As an entrepreneur, there are several factors to consider when preparing to launch your start-up. One of these factors, that is often overlooked, is how to use federal trademark law to protect your business as you build your brand.
Choosing a brand name for your start-up
Although it is tempting to hit the ground running with your “perfect” brand name, a prudent entrepreneur does her homework.
The first step in executing an effective trademark strategy for your start-up is conducting a comprehensive search of the market to ensure your brand name is not already being used by another business. This search can start with something as simple as conducting a Google search, or a search of the United States Patent and Trademark Office’s (USPTO) publicly available database.
However, these types of searches are limited, and may overlook marks that a USPTO Trademark Examining Attorney may cite as “confusingly similar” against your desired brand name (in denying your trademark application). An experienced trademark attorney could conduct a comprehensive search to assess the risk levels associated with attempting to federally register your preferred brand name. This type of search would include a risk-level assessment of marks found in a federal, state, and common law search.
Making this type of assessment early on in the pre-launch process of your start-up provides an opportunity to make any necessary changes to your desired brand name, before it becomes an issue (i.e., significant investment has been made to roll out a marketing campaign featuring a name that is actually already in use by another similar business).
Reserving rights in your brand name with a federal trademark application
Once you have conducted a trademark search and are confident in your brand name selection, the next step in executing your trademark strategy is reserving the federal rights to your mark.
U.S. trademark law allows an applicant who has a bona-fide intent to use the mark to apply for a federal registration before she has launched the business. This allows an entrepreneur to “reserve rights” in the mark while continuing to prepare for the official launch. An applicant can continue to extend her reservation of rights for up to 36 months, if necessary.
However, once the business is operational, a second filing with the USPTO is required to prove that your mark is being “used in commerce” as originally indicated in the application. Depending on the type of product or service your business is offering, this typically requires a showing that you are actively serving or selling to clients or customers across state lines in the United States.
Securing a priority date can provide a significant advantage in a particularly fast-paced market, where a competitor could swoop in at the last minute to secure trademark rights while you are preparing the launch.
Policing and enforcing your federally registered trademark
Once your federal trademark registration has officially been granted, the next step in executing your trademark strategy is policing the rights to your mark. It is up to the trademark owner to police the market to ensure other businesses are not infringing on its trademark.
This can be done in several ways, whether something as simple as conducting a periodic Google search of your trademark targeted at your specific market or relying on an experienced trademark attorney to provide monitoring services of the USPTO trademark database.
Often, a trademark owner will combine these strategies to ensure that a well-rounded approach to policing her mark is in place. The consequences of not vigilantly monitoring your mark can be severe – you could suffer irreparable harm to your trademark through the poor services or quality of a competitor using a similar name. For each third-party using a similar trademark, it also reduces the strength of your own trademark, reducing the scope of protection and, in many ways, limiting the value of exclusive rights in the trademark.
The process of launching a start-up can be overwhelming, but protecting your brand name with a trademark should not be a factor simply overlooked or brushed aside. Methodically selecting your brand name, and federally registering your mark now, may save you headaches in the future. For assistance in this process, reach out to an experienced trademark attorney for guidance.