Choosing a New Trademark without Getting Into Trouble

by / ⠀Startup Advice / December 8, 2011

trademark troubleWhen choosing a new brand name or logo, entrepreneurs have a tendency to focus on the creative end, and then plow ahead without contemplating the potential ramifications of their actions. This is understandable—the brand is the public face of what you’ve determined to be the next great thing. You’ve got a poignant or creative or provocative brand, and you’re ready to run with it—let the people know what they’ve been missing out on all these years. It’s the best thing they’ve never known that they needed, and now can’t live without, and you’ve got it in your hip pocket (literally or figuratively, either way).

Are You Sure This is the Time to Take a Leap of Faith?

But, the leap into marketing can be a pure leap of faith if you haven’t done the necessary research to make sure your new brand name isn’t already in use by someone else. Using someone else’s trademark is serious business: Companies big and small spend millions of dollars protecting and enforcing their trademark rights, and if you choose a brand name that conflicts with someone else’s, your brand image will quickly fade in a mire of legal expenses and re-branding costs.

Plus, remember what happened with Netflix’s attempted DVD spin-off? The branding campaign was a disaster because someone already owned the Quikster Twitter account, and had an avatar that was a pot-smoking Elmo.

Why Not See What’s Out There?

As a result of these types of issues, entrepreneurs and business owners rolling out new brands are well-advised to conduct trademark “clearance” research (or hire someone to do it for them) prior to taking the Internet by storm.

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Thorough clearance research involves:

  • Searching multiple related terms—not just your proposed trademark (remember, the test is “likelihood of confusion”, and more than just your exact trademark comes into play)
  • Searching the USPTO for active registrations and both pending and denied applications, and reviewing the histories of relevant files to see what happened to each of them along the way
  • Searching state trademark and business entity (corporation, LLC) databases to see if anyone else is using a similar name
  • Searching other online databases, listings and resources to see if anyone else is using a similar name, and to see if there are any other potential issues that might counsel against adopting the trademark

It is critical to keep in mind that “common law” trademark rights exist even in the absence of a registration with the USPTO. As a result, someone who hasn’t yet applied for registration could still have very real – and very valuable – rights that they fully intend to protect. This is why searching state and online resources is such a critical part of the process. Even if you can file for registration to cut off the scope of their rights (“common law” rights remain intact, but cannot be expanded once a trademark registration application is filed), this still does not give you exclusive rights altogether.

Whether you want to move forward in the face of pre-existing rights is a decision that you may have to make, but you are far better off making it knowing what’s out there than risking litigation and re-branding by turning a blind eye.

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In short, trademark clearance research is a fundamental part of the process that is well worth the investment. If you don’t spot any issues, you’re good to go. If you spot some issues, at least you can re-brand now (or seek a license or transfer or other agreement) by choice, instead of in the middle of a PR disaster down the road.

Jeff Fabian helps business owners protect their brands so that they can stay focused on running their businesses. Jeff is also a co-founder of TrademarkIntel, LLC, developer of an innovative software application for conducting instant, cost-effective trademark clearance and monitoring research. You can follow Jeff on Twitter @jsfabian.

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, 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.