Guest Blog: Proper Branding Starts With a Search

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Since you are reading this on its site, I suspect that you are familiar with Gainlight Studios Inc. Gainlight is great at branding your business. As its owner will tell you, in order to grow and protect the value of your company, a brand is necessary. In the law, we call any source of good or service a mark.  I’m writing to let you know that before you pick your brand or mark though, you should ensure no one else has already used the mark.

Many business owners have a mark in mind before they even have a product.  Most of those don’t check to see whether someone else already had the mark though.  Proper investigation through trademark searching is imperative to avoid possible trademark infringement lawsuits, or having to start over with a different brand. To lose a federal trademark infringement suit and/or lose all your brand equity for failing to do a quick simple search at the beginning is both an unnecessary risk and a foolhardy enterprise.

A good starting off point is searching the United States Patent and Trademark Office’s TESS database for conflicting marks.  However, this search only covers existing and pending federal registrations of trademarks.  Just because a mark isn’t registered does not mean that the owner of the mark lacks trademark protection.  In fact, the law affords any mark holder some limited – so called common law – trademark rights. As I said, this is only a starting off point.

A more complete search is often called a common law search.  This kind of search will cover all pending and registered trademarks as mentioned above.  However, it will also search the registers of all 50 states for any state registrations, and common law and trade name directories, as well as domain names.  This is a complete search that affords not only the knowledge that you’re not infringing someone’s mark, but can serve the non-legal function of a guide to navigate potential conflicts that may exist in the landscape for your products or services.  Additionally, you may learn that a term is already being over used in a field and you don’t even want to be using that mark.  Investing marketing and branding resources into a mark that isn’t even distinctive is like digging a fox hole with a spoon.  You may get a hole dug, but it will take much, much longer. Beyond trying to make a name for business, the overused term will not be provided that much protection by the courts if it is later infringed by third parties.

Do you need an attorney to do all of this?  I can’t give you advice on that, but I can say though that a failure to conduct a proper trademark search can land you in hot water for willful infringement of a suit.  Basically, your failure to do your due diligence will result in the court possibly ruling that you might as well have, and purposefully ripped off someone else in bad faith.  In addition, while many people could have an opinion on whether marks you find are similar or the same, so as to infringe, every Federal Circuit Court of Appeals has a different multi-faceted test for what actually constitutes “confusingly similar.”  A licensed attorney concentrating in trademarks, or willing to take the time to research the case law and statute will be more able to render a legal opinion on whether or not the law would view a mark as confusingly similar.

TL/DR – In short, cause a proper trademark search to occur prior to committing to any branding.  To fail to do so is foolhardy, but to do so is an early step in creating not only a great brand, but a great brand that is protectable and not infringing.

Disclaimer:

This blog post was prepared solely for informational purposes. This blog post does not contain any legal advice and does not result in or constitute an attorney-client relationship. Please do not forward any confidential information; I will assume that information received is not confidential. Any readers of the blog post should consult with an attorney before relying upon any of the information contained on the blog post.