Top 3 Things to Remember About Trademarks in Branding
If you anticipate trademark protection for the name “Journey Technology Partners” when it’s in simple written form, you’ll be disappointed to realize that won’t be the case. And if your boss comes back to you in five years wanting an updated logo, you will need to file a completely new trademark application to receive protection for your updated logo.
Don’t be surprised if/when your trademark attorney suggests you focus on gaining federal registration for your name before going through the process for your logo. By investing in trademark protection for your name on its own, you’ll have the flexibility of using that name — regardless of its graphic treatment — with the expectation of being protected.
3. Don’t Bet the Whole Brand on a DIY Trademark Search
As you’re brainstorming brand names for your new product launch, you’ll probably do a quick Google search or even visit the United States Patent and Trademark Office website to see if the name you’re considering already has a trademark. But don’t make the mistake of thinking that even your most exhaustive search is sufficient. The reality is that this is a task that is best handled by the professionals.
For example: Imagine that you’re launching a new line of accessories and you’ve decided that the name “Sunglasses, Etc.” is a winner. You do a quick search on the USPTO website and nothing comes up, leading you to believe that the name is “available” and therefore, without potential issues. But what your search didn’t reveal is that there is an existing trademark for a competing brand called “Sunglasses Etcetera,” and if your business starts using the name, you’ll be infringing on the other business’ name—and could have to go through a time-consuming and expensive rebrand, or may even be responsible for damages.
Before settling on a name, insist your business employ the services of a trademark attorney to perform a comprehensive search on your behalf. In addition to having real-world experience that can help search for both exact names and names that the USPTO may deem “confusingly similar,” a qualified trademark attorney also has access to professional-grade software that allows for a much more comprehensive search than you could ever perform on your own.
Add the Trademark Process to Your Branding Roadmap
As you’re developing your branding strategy, ensure that you leave room in the branding roadmap for the trademark application process. Work with a trademark attorney to choose a unique name for your product or service, then let the attorney do a comprehensive search to ensure you don’t end up with any unwelcome naming surprises. And understand the legal importance of applying for a trademark for a name before a logo.
By following these tips, your business will benefit from a brand that is strong in the marketplace and, if necessary, in a court of law.
Josh Gerben is U.S. trademark attorney and principal of Gerben Law Firm in Washington, D.C. Named the No. 3 U.S. trademark filer in 2009 by Trademark Insider, Josh has represented clients in more than 5,000 trademark filings with the United States Patent and Trademark Office. Josh has been a featured panelist on FOX News and has provided insights and opinions to a variety of national news outlets, including The Wall Street Journal and NPR. Learn more about trademarks on Gerben Law Firm’s blog.