Trademark Traps for the Unwary

Posted on December 28, 2020 in IP & Social Media

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“I have the domain name. Doesn’t that count toward a trademark?”

“I did a search online and no one has the name. Why can’t I get a trademark?”

As Nina Yablok’s article, “Trademarks and Google,” touches on, Google isn’t the be-all and end-all when it comes to filing trademarks. That’s why, even in this high-tech, “AG” age, it’s still worth investing in the old-fashioned kind of searches done by real people who are trained to look for obstacles (Current retail price, approximately $600). As my namesake points out, the U.S. Patent and Trademark Office doesn’t look only at exact names or phrases in determining whether there’s a conflict. It also looks at whether a “mark” is sufficiently similar to another to be likely to cause confusion (Note, it doesn’t actually have to cause confusion–just be likely to).

Let’s take an example of two consulting companies–one in California and one in Virginia. Both consult with clients on marketing and PR skills to help hone their essential messages, elevator pitches, etc. The California company uses the phrase, The Spin Doctor. The Virginia company uses the phrase, The Pitch Doctor. The untrained researcher (that is, the entrepreneur looking to do this on the cheap) would probably not be able to come up with enough permutations to cover all the bases… but the people handling the searches can. And it’s likely that the trademark office would look at those two phrases and consider them too similar to allow them to co-exist. If you’re the second to file, it’s likely you’re the one who will have to cede your seat.

If you truly want your company name (or tagline) to become the next household name, realize that it will take time and money to invest in protecting it properly. There’s no point spending money to register the mark, build up the marketing, print the business cards and develop the website, only to have a larger company with a prior claim stomp all over those plans with a cease and desist letter. Invest in the planning and searching before you launch. A good IP attorney can guide you through the process.

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