An accusation of trademark infringement is an expensive and time-consuming inconvenience. Before using or registering a trademark for a logo or catchy slogan for your business or product, you must ensure no one else had already trademarked something similar or has been using it before you did for the same type of business. The last thing you want is to invest a lot of time, money, and effort in selecting the right trademark only to discover that somebody else already owns it.
What Is Trademark Infringement?
According to USPTO: “Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”
At its worse, trademark infringement is the deliberate use of another company’s logo, slogan, brand name, or another form of identity in breach of established intellectual property rights. But trademark infringement also happens without bad intentions. We hear a lot of stories about unintentional infringements. Many times, brand owners infringe on other brands due to a lack of deep research into what is in use.
Avoiding Trademark Infringement
Several factors are involved in determining whether a trademark infringes on the rights of another trademark owner. The key consideration for the court is the “likelihood of confusion between your mark and existing trademarks or service marks in the marketplace.” Don’t use a name that is confusingly similar or identical to a name associated with comparable goods or services. You don’t want people to confuse your products with another merchant’s products. Also, you don’t want to use a name similar to a famous mark even if your goods are not identical. You may be liable for trademark dilution.
Therefore, consider the suggestions below if you are starting a brand and want to avoid accidental trademark infringement.
“You want to create evidence that you had a good faith basis for selecting your name. Prove that you didn’t intentionally use a mark likely to confuse with a mark in use by another business or product.”
Attorney Marcos E. Garciaacosta.
1.-Conduct a trademark search
Once you’ve established your brand name, you or your attorney must search for existing trademarks to ensure that your chosen one doesn’t infringe on anyone else’s existing trademarks. You want to make sure no one has claimed your name or a similar name. It is critically important to conduct due diligence to determine whether an unregistered trademark is currently in use.
You should perform a search on the USPTO’s database of registered trademarks. Don’t just search for an exact name, but search for similar-sounding brands, misspelled versions of the word, synonyms, even foreign versions, etc. If you don’t find any potentially troublesome marks, search the internet at large, again using similar-sounding names, misspelled versions, etc. You can read how to do a trademark search on our blog here.
2.-Register your trademark
Generally, if you are the first person to use a trademark, you acquire rights to the mark as soon as you start using it to sell goods or services. This is called Common Law rights. Although registration with the U.S. Patent and Trademark Office (USPTO) is not required, it is advisable because it dramatically strengthens your claim to a trademark if a dispute arises. Thanks to the power of the USPTO system, if you file for a mark:
- You have the right to press charges against a company or individual that has used your trademark without authorization.
- You can provide the court with the registration certificate to prove your trademark ownership.
3.-Document
To claim infringement or to avoid an accusation against you, you must be able to prove with documentation that you have a valid registered trademark. To protect yourself from infringement allegations, consider writing down and dating what you did before selecting your name.
“You want to create evidence that you had a good faith basis for selecting your name. Prove that you didn’t intentionally use a mark likely to confuse with a mark in use by another business or product,” said Trademark and Intellectual Property Attorney Marcos E. Garciaacosta.
For example, print out your TESS search results. Make notes about your domain name and Google searches. Put your preliminary search records in a file and keep them. Take notes about your reasoning and conclusions.
4.- Use your trademark
It is important to say that Trademarks must be used; otherwise, they can be considered abandoned.
The best way to protect your interests and ensure that you’re choosing the safest name or brand for your business is to enlist the services of an experienced intellectual property attorney. One conversation could save you thousands of dollars.
More About Attorney Marcos
Marcos Garciaacosta is an international business, patent, trademark, and intellectual property attorney. He can assist you in the process of selecting, researching, and filing a trademark.
Contact attorney Marcos for 15 minutes free consultation by phone on how to avoid trademark infringement at (480) 324-6378.