Last week, I taught you the one big mistake you’re probably making when choosing a name for your business, product or thingamabob. What I want to teach you this week, is what to do after you have chosen a solid, trademark-registration-friendly name.
Once you have selected a fanciful, arbitrary or suggestive trademark for the name of your product or company, the next step is to conduct a trademark search to ensure that someone else hasn’t already established rights in the proposed mark. Remember that you will be presumed to be aware of every mark on the Federal Register (that’s the Feds list of every federally registered trademark). So if you start using a mark and later find out that it was registered to someone else, then, at worst, you could be liable for trademark infringement. At best, you could be forced to shut down your website and change the name and brand of your company.
But there is any easy fix for this, simply conduct a trademark search before you commit to that new name you want to use. The US Patent and Trademark Office’s database is located at http://tess2.uspto.gov. Once you’re sure there is no other company using the mark in the classes you want to register in (more on classes below), then you will want to conduct a further search to see if there are any companies that may have common law rights to the name you want to use (ie, they haven’t registered the trademark yet, but they are actively using the mark to sell goods or services and therefore may have what’s called common law trademark rights in the mark). A Google search is a good start but that is not a comprehensive search.
Here are the steps to complete a basic trademark search.
- Do a search on uspto.gov/tess and be sure to search for variations of the name you want to use.
- Do a business search on the Secretary of State’s website in your state and the other states your company has a presence in.
- Search the search engines: Google, Yahoo, Bing (note that you have to look at all of the results not just the first page).
- Search the white pages and yellow pages.
- Do a domain name search for the mark, again, be sure to search for variations.
- Do a search on Amazon.
There are databases available to conduct trademarks searches but they are often expensive to use and complicated to learn just for a one off search. There are online vendors that offer trademark searches but I know from having worked with clients who have used them in the past, they tend to give you too much information, much of it not applicable, rendering the search almost useless.
You can also hire an attorney to conduct your trademark search which can be beneficial since the attorney will evaluate the results for you and make recommendations about whether you should attempt to secure the mark or not as well as similar marks that may be more distinctive. Whether you use an online vendor or hire an attorney to conduct your trademark search the cost will be about the same – between $250 – $500.
Here's how things can go very wrong if you skip the trademark search.
Trademark searches are essential if you are planning to invest large sums of money in the name of your business, product or thingamabob. For example, if you plan to spend large sums of money creating a product with the mark etched into it, then you want to make sure the mark is actually available before you pay for $20,000 in inventory. Likewise, if you have a new business and have spent the money to build a website and brand the company with that name, or even worse, have spent the time and energy building up brand recognition by creating content, networking and otherwise kicking ass from a marketing and sales perspective. It would be devastating to invest thousands of dollars in building your brand around a mark only to later find that the mark is infringing on someone else’s trademark rights and therefore, you have to change the name, rebuild your website, destroy your products and marketing materials bearing the mark, etc.
Imagine being marketing consultant Kelly Kautz, a small business entrepreneur with a brand, website and blog one day and a “cease and desist” letter from a competitor the next. After several active and successful years building up her brand online, with guest posts and strong search engine status, she had to hand all of that recognition and goodwill to the competitor who owned the trademark in her business name. Here’s how she described it to her followers in a blog post that was both an apology for the inconvenience and a request that people help her rebuild by re-subscribing and updating their links:
“Naturally this situation has been overwhelming and emotional. I’ve worked on the Womenwise Marketing brand for many years, and was finally starting to see good results after hundreds of hours of search engine optimization. Now that SEO will go to benefit a competitor, and I’ll be starting from scratch.”
No doubt, this situation was personally devastating to her. She has since gone on to write about other small business owners in the same predicament.
So now that you know how important conducting a trademark search is for your company, don’t put your head in the sand and ignore both Kelly’s and my advice. Be proactive and get the trademark search out of the way so you can confidently run your business like the Boss that you are.
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