You ’ve got inspiration, investors, and a prototype—you’re well on your way to taking the world by storm with your new product. Now you need just one more thing: a trademark for your groundbreaking creation. Something that’s memorable, evocative, and, perhaps most importantly, legal.
So, what determines the legality of a trademark? The first thing to consider is infringement. As Stanley P. Jaskiewicz, a business attorney with the firm of Spector Gadon & Rosen, says, “Your business name—a brand, or, in ‘legal speak,’ a trademark—must not only be effective for your marketing, but also must avoid infringing on the names of existing products.” In other words, you can’t give your product a name that will cause confusion with another company’s trademarked product or service.
When there’s the possibility of confusion, the trademark holder wins out, even if logic would seem to dictate otherwise. Just ask the folks at Twitter, whose application to trademark the word “tweet” was denied not once but twice by the United States Patent and Trademark Office (USPTO). Seems that an Iowa advertising agency, TwittAd, already had a registered trademark for “Let your ad meet tweets.” Twice thwarted, Twitter then sued in federal court to have the TwittAd’s trademark canceled; the case settled out of court and the trademark for “tweet” was transferred to Twitter, likely for a tidy settlement.
But even if you have, say, a few billion dollars, you still might not prevail in a trademark infringement dispute. Back when Donald Trump was just a businessman and reality TV celebrity, he tried to trademark his show’s catchphrase, “You’re fired.” Unfortunately for The Donald, the USPTO deemed the phrase too likely to be confused with “You’re Hired,” a trademarked educational game, and Trump was trumped.
Search, and search some more
The point is, you need to do your homework and make sure your trademark is actually available. A good place to start is the USPTO trademark database, where you can find trademarks that have been registered or applied for. You should also check your state’s registry of incorporated businesses; the Small Business Administration website has links to the various state agencies.
But don’t stop there; you need to be aware of non-registered names as well. “You must thoroughly investigate whether any existing names are ‘confusingly similar,’” says Jaskiewicz. “That search involves far more than simply checking the US Patent and Trademark database, or your state’s incorporation listing. You also have to look for ‘common law’ uses that are not required to be registered anywhere—but which could force you to change your name, regardless how much you have invested in it.” So, do an internet search to see if another company is already using your lovingly crafted trademark or something similar to it.
SEE ALSO: 10 Hints for Choosing a Brand Name
Get legal assistance
You can hire an agency to do this trademark sleuthing, but whether you do it yourself or farm it out, you should consult with an intellectual property attorney to review the search results. (Alternatively, you can have the attorney conduct the search from the get-go.) Why involve a lawyer? Because determining infringement isn’t as simple as comparing a list of words. Would you have realized that “You’re fired!” infringed on “You’re Hired”? An experienced intellectual property (IP) lawyer likely would.
The results of overlooking potential copyright infringement could cost you a bundle. “You will learn if your mark ‘infringes’ another brand when you get a cease and desist letter from an attorney for the other firm,” says Jaskiewicz. “You may even be hauled in to court to fight a request for an injunction. All of that can be very expensive.”
In addition to protecting you from an infringement battle, an IP attorney might just save a trademark that you’d given up on. Remember, for infringement to exist, the trademark must cause potential confusion. So if you’re seeking a trademark for “Twinkie,” you might be okay if your product is a smartphone app that creates sparkly lights, but you better not be in the baked goods business. This is why Apple can be a registered trademark for both a computer maker and a record label—the businesses are so dissimilar that there’s scant room for confusion. An experienced IP lawyer recognizes these distinctions.
Dot your i’s and cross your t’s
Moreover, there are other fine points that can jeopardize your trademark application. For instance, your trademark cannot be a generic term or a simply descriptive word or phrase. So “Carol’s Coffee Shop” or “Great Bike Repairs” won’t cut it—your trademark must be distinctive within your industry.
Your attorney also can file the application for you, a process that can trip up newbies. The USPTO will reject applications that aren’t properly completed, as former Alaska governor Sarah Palin found out when USPTO returned her application to trademark her own name. Why? Because she failed to provide consent for the use of her name! Sure, you can resubmit the application (as Palin successfully did), but another business could have applied to trademark your chosen name before you’ve refiled.
What’s more, your IP lawyer should also make sure that you submit a trademark application for other countries where you think you’ll do business. Timing is crucial: if you file for a foreign trademark within six months of having applied for one in the United States, the foreign trademark will be backdated so that it’s consistent with your US registration. (Note: Another thing to think about if you intend to apply your trademark in foreign markets: consider the meaning it might convey in another language. Ford, for instance, learned the hard way that “pinto” refers to male genitalia in Portuguese slang when trying to market its erstwhile subcompact car in Brazil.)
In short, when devising that perfect name, be creative but don’t be penny-wise and pound-foolish. A small fee for professional advice might save you a ton of money down the road.
Gary Alt is an editor and writer based in the Seattle area. For the past several years, he’s focused on editing and writing articles that put a human face on technology and, more recently, about legal issues in everyday life on the Avvo Stories blog. Avvo helps people find and connect with the right lawyer through industry leading content, tools and services.