5 Tips to Be Smart About Trademark Selection

by / ⠀Startup Advice / February 28, 2012

With new startups starting up on a daily (if not hourly) basis, it is becoming more important now than ever to adopt a trademark that works to immediately distinguish your business from its competitors in the marketplace. Not only that, but you also must be careful to avoid adopting a trademark that infringes on someone else’s pre-existing trademark rights. Here are five tips for being smart about selecting a trademark for your startup.

Make Sure Your Name is Available

When evaluating potential new trademarks, there are two (at least two) critical points that business owners need to keep in mind: (1) limited “common law” trademark rights exist automatically even in the absence of a USPTO trademark registration; and, (2) the test for trademark infringement is likelihood of confusion—meaning that just because your trademark isn’t identical to a pre-existing brand doesn’t mean that it’s safe to use. Before adopting a new trademark, it is absolutely critical to obtain thorough trademark clearance research with legal analysis to make sure that the trademark won’t get you into trouble (before being discarded and replaced with an alternate trademark).

Search Logos as Well

If your trademark incorporates graphic design, in addition to “clearing” the words you also need to make sure that its design doesn’t infringe any pre-existing trademark rights. Even where the words in two trademarks are unrelated, they still may be considered “confusingly similar” for trademark infringement purposes if the graphic elements aren’t sufficiently unique.

Seek Protection Early

Even though limited trademark rights arise automatically, trademark registration with the USPTO is critical to securing exclusive rights in your brand. Beyond the benefits of exclusive ownership, trademark registration also serves the practical purpose of putting potential competitors on notice of your claim to rights. Remember, not everyone is as smart as you to obtain thorough trademark clearance research, and sometimes all they do is run a few quick searches in the USPTO database. If your trademark shows up in the results, you are much less likely to have to deal with issues that ought to be easily avoided.

Engage in Effective Monitoring

As a result of the fact that not everyone performs trademark clearance research like they should, it is also critical to engage an active trademark monitoring service. It is a fact of business that other people will move forward without taking all necessary precautionary measures; and, as a result, it falls on you to make sure that your exclusivity and reputation are maintained. A comprehensive trademark monitoring service will track new USPTO trademark registration applications, domain name registrations, social media references, search results, state business databases, and a variety of other resources.

You can think of trademark monitoring like insurance: you might never need it, but you’ll sure be glad you have it if you do.

Keep an Eye Toward Expansion

As the foregoing tips hopefully make clear, developing and protecting your company’s brands is an ongoing process. In this vein, business owners should be constantly attuned to attempting to identify new opportunities to both (1) develop (or acquire) new trademarks, and (2) monetize existing trademark rights. Simply put, business owners who are smart about getting the most out of the benefits that trademarks provide will have a leg up on their competition.

Jeff Fabian helps business owners protect their brands so that they can stay focused on running their businesses. Visit http://etrademarksolutions.com for more information. You can also follow Jeff on Twitter @FabianOnIP.

This article is provided for informational purposes only, and does not constitute legal advice.

About The Author

Matt Wilson

Matt Wilson is Co-Founder of Under30Experiences, a travel company for young people ages 21-35. He is the original Co-founder of Under30CEO (Acquired 2016). Matt is the Host of the Live Different Podcast and has 50+ Five Star iTunes Ratings on Health, Fitness, Business and Travel. He brings a unique, uncensored approach to his interviews and writing. His work is published on Under30CEO.com, Forbes, Inc. Magazine, Huffington Post, Reuters, and many others. Matt hosts yoga and fitness retreats in his free time and buys all his food from an organic farm in the jungle of Costa Rica where he lives. He is a shareholder of the Green Bay Packers.