A lawyer once made it very clear to me. He said if you ever have a dispute over a name, and you end up in court, then the party with the registered trademark stands up and says: “Judge, I have registered trademark number 9999999 – here is my certificate from the USPTO. I rest my case.” The he sits down and the opposing party has to prove that the registered trademark was issued in error, despite all the checks by the client, his lawyer and the government’s examining attorney.
Of course, it seldom gets this far. If everyone is doing their due diligence then one party will see that someone else is already using the name in a similar category of goods or services and they will go a different direction. Or the filing will have been denied on other grounds like “too generic”, “too broad a set of claims”, “no proof of usage”. Regardless of what the Intellectual Property office of your local government says, many names are still used and many are common across the country. But only by small businesses who don’t care what happens three states over until they get the dreaded “cease and desist” letter.
Not long ago a lady called me in tears from the midwest. She had used a name for over three years and then woke up one day to one of these letters. If only she had spent the few hundred dollars it takes to get a registered trademark in the first place, she would probably not have been forced to change a successful name and marketing strategy.
For these reasons, and a number of others, I strongly recommend you get a registered trademark on all your key brand names. You can even file an application online yourself if you can prove usage of the product. But first do a proper search or you will lose your money. And if you can, check with a trademark attorney.
Yes you have trademark rights the minute you use a name, even if you never checked anything. Even if you did not put a ™ after the name (this is really for emphasis only until you can put an ® next to the name and then really put all the country on notice. But why take the chance?
Your name is your most important weapon in the battle for the mind, as Ries and Trout so eloquently said years ago. Treat it right from the outset. Even if you are very creative, use a naming agency or consultant (or lawyer when you can afford one) to do a due diligent comprehensive search in advance. Read the labels wherever you go. Notice how Kellog’s uses trademarks over breakfast. See McDonald’s on all their packaging at lunch. And, of course, Starbucks at any time, even though you would have to be nuts to copy such a prolific name.
PS Just because a name is trademarked, doesn’t mean you can’t use it. Their are hundreds of registered trademarks with words like National, or United or Insight in them. But they are all in different categories or are not “confusingly similar”. This is where you especially need professional help.
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