Common Trademark Pitfalls – Revealed!

Nina L. Kaufman, Esq.

Nina L. Kaufman, Esq.

Nina L. Kaufman, Esq., owner of Ask The Business Lawyer, is an award-winning business attorney, speaker, and Entrepreneur Magazine online contributor. She saves consulting and professional services companies time, money, and aggravation by serving as their outsourced legal counsel.

Posted on October 27, 2012 in IP & Social Media

Picture this: you’re renovating your house (or apartment, for us city dwellers)…and it looks like a bomb just hit it: sawdust and sheetrock shrapnel is everywhere; there are open paint cans and trays and brushes dotted about the drop cloths on the floor; wires and cables snake from the ceiling and along the open baseboards; appliances are ajar and piping is exposed; cracked tile shards carpet the bathrooms and kitchen. You have a 7-month-old infant who is a crawling dynamo. So I ask you: would you leave her alone in the middle of the living room to fend for herself?

Of course not. Dangers abound: glass, dust, sharp objects, poisonous substances, suffocating materials. All are just waiting for Baby to ingest or brush against. It could kill your child. I’d venture a guess that not a single one of you readers would think for a moment of leaving Baby there unprotected (at least I hope not!). You might not even bring her into the house altogether until the renovations were finished. Keeping your child safe from harm is paramount.

Unfortunately, entrepreneurs aren’t always as vigilant in protecting with their own “brain-children,” such as their potential trademarks (you were wondering about the connection, weren’t you!). Creativity is often an intuitive process. The procedures for protecting and enforcing creativity are not. Trademark dreams can evaporate like smoke if you’re not careful. Here are a few samplings of the common pitfalls that can harm your “baby.”

1. Crossing the street without looking both ways. Many is the company that has paid dearly for consultants, marketing materials, media time, and stationery, only to investigate (belatedly) that their “pride and joy” – their trademark – cannot be protected or enforced. Competitors can use it freely. Entrepreneurs can be so hot to trot about their next great tag line or marketing campaign that they neglect to check whether anyone has done something like it before. The joy of watching your creative “baby” take each step, needs to go hand-in-hand with monitoring each step. Small business owners should ask themselves at each stage of the creative process: (1) can I protect what I am creating? And (2) if so, how? Can you answer these questions?

2. If you’re not seeking, you’re not finding. Along with their enthusiasm, small business owners can also be egomaniacs. Their belief is so firm that no one in the history of the world has ever come up with such a trademark, that they are blinded to the possibility that one could exist. So they do not conduct a proper search – or any search, for that matter. Just perusing the database of the U.S. Patent and Trademark Office is not enough. Why? The database only covers applications filed and registered with the Trademark Office. Because there are infinite permutations of trademarks out there that could be similar so that those searches would not find it. The Trademark Office looks at exact marks and similar marks. If you select a name that is too similar to a competitor’s, you may not only be prevented from registering it, you may open yourself up to a barrage of nasty lawyers’ letters leading to a trademark infringement lawsuit against you. Have you done a complete search?

3. Relying on domain names alone. As with the Trademark Office database, just checking domain names is insufficient as a search. The “agency” that doles out domain names – the Internet Corporation for Assigned Names and Numbers (ICANN) – has nothing to do with the Trademark Office. The fact that an available domain name matches your desired trademark does not mean that you’ll get the trademark free and clear. Have you checked sources other than GoDaddy?

4. Having a generic or descriptive mark. One of the significant purposes of a trademark for products (or a service mark for services – same thing) is to distinguish and identify your goods or services from someone else’s. That’s why the Trademark Office looks at both exact trademarks and similar marks. If you use a generic or descriptive mark, there’s little way to distinguish your products. Take “soap.” “Soap” is a generic word. If you tried to market your line of soap by calling it “Soap,” the mark will never be registered. There are millions of different kinds of soap! How is the consumer supposed to identify yours among all others? If your mark merely describes the soap, as in “Lavender Lanolin Soap,” that’s a little better, but still too broad. Jump to Ivory® Soap though and you have a winner. Is your mark sufficiently distinctive?

5. Not playing watchdog. Many entrepreneurs believe that once the Trademark Office has registered their mark, that’s the end of the game. Wrong!! You have an ongoing obligation to “police” your trademark to make sure no one else is using it in an “infringing” manner. An “infringing manner” includes any unauthorized use of your trademark on the same or similar goods or services to yours. If you don’t monitor this carefully, you may find that you have lost the protection you tried so hard to obtain. The responsibility lies completely on you to take action (that is, bring a lawsuit, if necessary) to stop any “infringing use.” Are you – or is someone on your behalf – on the lookout for infringers?

If your intellectual property is important to you, don’t leave your baby unprotected from danger by treating it’s protection as a do-it-yourself project. As you can see, there are a lot of nuances required for protection and preservation of your trademarks. Be sure to consult with an attorney who is knowledgeable in this field to make sure you avoid the pitfalls!

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