Whether you’re launching a new company, rebranding, or just refreshing your product names and taglines, thoughtfully planning your trademarks and engaging legal counsel at the appropriate time is key. Every business can learn from the lessons currently faced by the Washington, DC NFL team. They aren’t the first to set out on a rebrand only to find third parties sitting on their desired trademarks —and they won’t be the last.
Survey the Trademark Landscape
So, how do you go about making sure you can use your desired name? The short answer is trademark clearance. Typically, clients should engage a trademark lawyer early in the planning process when they have 3-5 names that they like, but not love (yet). Emotional attachment to your new branding idea is easy to develop, but is also a common source of heartbreak if you aren’t certain it’s a name your company can use. By working with a trademark lawyer when you only like a set of names, you’ll be in the position to understand the risks around your use of the name, whether it is a viable trademark, and if you should consider selecting other options. Maybe there is someone out there who has trademark applications or registrations for similar goods or services that would block your use of the mark. Or maybe someone is making common law use of the mark without any trademark registrations. And maybe someone is squatting on the trademark and you can take appropriate action to clear the way for your valid use.
By working with your trademark attorney early in the process, you can uncover these hurdles and risks in order to make an informed decision about the direction of your brand, product names, and taglines before you have invested significant financial resources, time, and emotional energy into a new trademark. Typically this small, upfront cost can create significant savings for you in the long run. The last thing a business wants after an expensive launch or rebrand is to receive a cease and desist from someone with superior trademark rights that would require their company to restart the process to avoid infringing on that party’s trademarks or potentially pay damages.
Reserve your Rights
But that’s not the end of it. Once you have decided on a trademark that has been cleared, it’s time to protect that mark and your ability to appropriately claim exclusive rights over it. The United States Patent and Trademark Office allows applications for intent-to-use trademarks if the applicant has a bona fide intent to use that mark in connection with the applied-for goods or services in the future. That use may never come to fruition, but, as long as your good faith intent at the time of the application is to use the mark, you can effectively reserve your trademark for a period of up to 3 years following the issuance of what’s known as a notice of allowance until you can demonstrate actual use of the mark or have to abandon the application as a result of non-use. This process is a little more expensive than filing a use-based application but it’s a lot more cost effective than delaying on a trademark application and having a third party start to use the mark before you do.
If you are considering new trademarks at any stage in your business’s life cycle and want to discuss the strategy for clearing and protecting your trademarks, please contact us – we’re here to help.