By: Garrett Barten, Esq.
“There are two types of people in business: the quick and the dead.” –
Dr. Phillip Barbay, Back to School (1986)
While the pompous Dr. Barbay was referring to 1980’s economics based almost exclusively on brick-and-mortar facilities and tangible products, “the quick and the dead” mantra is truer than ever in today’s business world. What’s more difficult in today’s market, however, is not being quick, but staying quick (at least long enough to maximize your return on investment). Many business owners are finding it increasingly difficult to maximize their company’s value in a liquidity event, or to simply grow their business, while simultaneously avoiding being put out of business by the next mobile application, social media, trendy product, or knockoff good. Fortunately, there are three easy ways to stay quick in the business world so you don’t have to constantly look over your shoulder at your competitors, which will always slow you down.
1) Brand first, sell next, save later
Sure, choosing a brand name for your product or service seems easy enough. Slap a label on a product, mark up your webpage with catchy slogan, or choose a clever name for your mobile application. This is certainly an expedient way to sell a product or service, but is a sure-fire way to invite problems in the future. Many companies either choose not to search and clear a trademark before adopting it, or otherwise perform what I like to call the “GooP” search; which includes a perfunctory Google® search combined with a character-for-character search of the trademark at the PTO. If the GooP search comes back clean (no pun intended), most business owners believe they are in the clear. Wrong.
While a GooP search is a good start, it is unlikely to provide you with confidence or comfort that the trademark you are choosing is available for to use and registrations with the PTO. For example, searching a mark like SCHMOOGLE is probably not going to get a hit at the PTO website or on Google® search. But, you can bet your bottom dollar that Google is likely to oppose your use of the SCHMOOGLE trademark for almost any good or service associated with that trademark. And, should your trademark be challenged by someone having rights superior to yours for your chosen trademark, your goods may be seized and destroyed, along with expensive commercial signage, or your may even have to hire counsel to defend you or your business. It’s a mess, it’s expensive, and it slows you down.
Solution: do your GooP search first. Then, retain trademark counsel to perform a full trademark clearance search using a third party professional search company and to opine as to the availability of your trademark. How do you find trademark counsel? You may start with this one for a free consultation, ask a general practice attorney you have used in the past for a referral, or search on Google.com for counsel in your area, among other online resources. If your trademark counsel opines that your trademark is likely available for use and registration, then you should promptly file to register your trademark with the PTO. The money spent on this upfront due diligence often pays dividends in the long run. For example, these steps will likely save you fees and time negotiating with the PTO and often avoid other trademark owners accusing you of infringement, assuming use of the trademark is opined to be reasonable. Even if the trademark fails the clearance search, you are better off knowing about the risks of using and applying to register your trademark before you invest in expensive commercial signage and advertisement that you may have to remove if someone opposes your use of your trademark.
Bottom line: don’t let others slow you down – choose your trademark wisely.