In Uncategorized

It seems the topic of Intellectual Property, Patent and Trademark issues has heated up in the past year or so. At least it has for us. I often get asked how to find out if a company name, product name or domain name is defensable from a trademark perspective. My knee-jerk response is “I’m not an intellectual property attorney, but….” … then I give them the following advice:

  • They need to review this issue with a qualified attorney
  • Understand that trademark infringement results in suits to the tune of $150,000 per incident (that usually gets their attention). This is not an issue that should be taken lightly and it would be foolish to proceed with a name that you suspect is infringing on another company’s rights
  • Searching on the USPTO.gov website is a great place to start but it is NOT a replacement for a qualified attorney’s “clearance search.” More on that in a bit.
  • You’re not reeeeallly “good to go” until the USPTO says so … which might take years.

To quickly find out if you have a potential problem, go to www.uspto.gov and do the following:

  1. Click on the “How To Search” navigation button, top right of home page
  2. Next page; Click on the “SEARCH trademarks now” link, top of the right column
  3. Next page; Click on the “Free Form Search (Advanced Search)” link in the center box
  4. Next page; In the Search Term box, type in the company/product name. Use quotation marks if it’s two or more words. Click on “Submit Query”
  5. Mix up the words to find other variations. For example if your name is “Power Boat Paradise”, you might want to try “Boat Paradise” or “Paradise Boat”, etc.
  6. If you find a “Live” trademark that is substantively similar to what you’re doing, you probably have an issue with how you’d be able to protect it or, more likely, even getting it approved by the USPTO to begin with. It would be better to just move along to the next name.

IMPORTANT NOTE: If you don’t find a match with a couple of searches, it doesn’t mean you should skip the step of having an attorney do a clearance search. Having the search performed by a qualified third party will demonstrate to anyone that you’ve effectively done your due diligence and you’re doing your best to not infringe on other people’s marks. Also, the attorney will typically do a more comprehensive job in this search process…. Use the USPTO site to exclude names, not identify useable names.

Comments
Recent Posts
CONNECT

We haven't flown the coop! But you can send us an email and we'll get back to you, asap.

Not readable? Change text. captcha txt

Start typing and press Enter to search