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Are You An Infringer?

registered trademarkIf you believe that your brand, which was created by a professional branding firm, does not infringe the rights of another, then this blog is for you.

If you believe that the name of your business does not infringe the rights of another, then this blog is for you.

If you believe that the domain name that you use to sell your products or services does not infringe the rights of another, then this blog is for you.

Now that I have your attention, you really should keep reading, because if any of the above statements ring true with you, then you are like most business owners in that you share one of many common misperceptions about trademarks.

Three of these misperceptions are discussed below.

Misperception 1: The branding company I hired created my business name, logo, or trademark for me, so it must be problem-free.

Wrong.

Many businesses contract with branding companies to create logos or trademarks, often for a hefty price tag. The problem is, while there are many legitimate branding firms, a number of them do not utilize an attorney to “clear” the brands they propose to their clients.

The proper way to clear a brand is to have a trademark attorney conduct a “comprehensive” trademark search (also known as an “availability” search) by searching and analyzing the Federal, state and common law trademark records to determine whether anybody else may have prior rights in an identical or confusingly similar brand. Without this search and analysis, you could be adopting a brand that infringes the rights of others.

The solution to this is to find out whether the branding company conducted an availability search through its own lawyer, or simply have your trademark lawyer conduct the search for any brands proposed by the branding company.

If the latter route is the way you go, you should make sure that the branding company is aware that they might need to go back to the drawing board (not at your expense) if the lawyer gives you bad news.

You also should be leery of branding firms that “clear” the use of a brand by searching the Internet only. Internet searches serve a limited preliminary search purpose, but they fail to provide the depth and accuracy that a comprehensive trademark search reviewed by a trademark attorney provides.

Misperception 2: The Secretary of State allowed me to register my business name, so it must be available for use as a trademark and trade name.

Wrong.

The availability of a business name in Secretary of State records does not necessarily mean that you can freely use that name as a trademark to sell your products or services. In other words, just because you are able to set up a company with your Secretary of State’s office – meaning nobody else registered a name identical to yours – does not mean that the name is free of trademark issues.

The reason for this is that most, if not all, Secretary of State offices limit their screening to identical or nearly identical business names that have been previously registered with that state, rather than search all relevant business names that may be confusingly similar to your desired business name.

“Confusing similarity” is the legal standard for infringement in trademark law. Therefore, if the Secretary of State does not conduct a comprehensive search of the Federal, state and common law trademark records – which it will not – then you will not know whether your new business name conflicts with the prior rights of another business.

So, just like in the branding company scenario, you must have a trademark attorney conduct a comprehensive search before adopting a new company name. This will save you a lot of hassle and money in the long run.

Misperception 3: The domain name that I want is available for registration, so I am free to use it as I please.

Wrong.

The availability of a domain name does not automatically clear your ability to register and use that domain name free of risk, because the domain you choose could infringe upon the trademark rights of others.

Similar to the Secretary of State clearance process, domain name Registrars (such as Network Solutions, this blog’s host) only review whether the exact domain is available rather than conduct a search of the Federal, state and common law trademark records.

The reason that this is a problem is that there may already be a business operating on the Internet that owns a trademark identical to the domain name you just registered. If this is the case, the trademark owner can potentially take your domain name away from you, because your use of a confusingly similar domain to that business’ trademark may constitute trademark infringement.

An easy solution to this problem is to only register generic domains (e.g., food.com, shoes.com, etc…). If you want to register a domain that matches your new business or product name, then the clearance search you do for the business or product name should also cover the domain name.

Note that you will not make your domain selection safer by choosing a “top-level” domain extension that differs from the trademark owner’s top level extension (e.g., registering nike.net will not safeguard you from problems from Nike if Nike only owns nike.com).

If any of these scenarios apply to you, or if you have already taken all of these steps but you never “cleared” your business name, logo or domain, should you be able to sleep at night?

YES.

It is never too late to conduct a clearance search, as long as you have a good trademark attorney review and analyze the necessary records.

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Image: verbeeldingskr8 via Flickr, Creative Commons

Lisa Dunner is managing partner of Dunner Law PLLC in Washington, D.C. She has extensive experience in counseling, protection and enforcement of intellectual property and unfair competition rights. Lisa’s expertise includes, among other things, Internet-related issues, trademark and copyright infringement, source code, keyword ads, domain disputes, framing, linking and social media issues. She regularly conducts intellectual property audits for her clients; manages and enforces international trademark and copyright portfolios; and represents numerous clients in cases before the Trademark Trial and Appeal Board and in U.S. state and federal courts. Lisa also negotiates IP and technology-related agreements. You can find Dunner Law on Facebook or Twitter.

DISCLAIMER: The information posted in this blog is provided for informational purposes. Legal information is not the same as legal advice — the application of law to an individual’s specific circumstances. The information presented here is not to be construed as legal advice. Women Grow Business recommends that you consult an attorney if you want professional assurance that the information posted, and your interpretation of it, is appropriate to your particular business.


    1. Lisa, just had to say BOY am I learning all sorts of great stuff from you since you started writing for WGB. Thank you!

      Looks like it all comes back to doing a clearance search. What is a ballpark figure for how much such a search could cost (including attorney fees)? I know you can’t give me an exact number, but even a range would be helpful, particularly to those of us who run “very small” businesses.

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    2. Good Shonali! My associate can conduct a “preliminary/knockout” search for approximately $100 (this only tells you what is going on at the Trademark Office though).

      The comprehensive search, which covers a review, analysis and written opinion of the Federal, State and common law trademark search results, costs approximately $900-$1400 (the range varies based on the complexity and number of results, and this cost includes our search vendor fee, which is about $435).

      If you are creating brands for a client, you should be able to pass this cost onto the client, but not for every brand you propose, since it would get costly….the knockout is a good way to go until you zero in on a brand everyone likes.

      Hope this helps!

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