Why You Should Consider Trademarking Before Naming Your Business
At the Yau Law Firm, we see business owners at various stages of their business. Most often, we meet people who are starting a new company or creating a new product. In addition to offering our business services, such as incorporating, filing non-profit status, and franchising, we always suggest our clients to think about trademarking. Now, it may not make sense to a new business owner to think about trademarking when the business has yet to enter commerce, but there truly is no better time to think about trademarking than at the very beginning. The worst advice anyone has ever given to any new business owner is that “re-naming your company is a simple thing.”
Imagine being in business for about two or three years, and after all the hard work, you received a cease and desist letter from another company demanding that you cease selling your product or services under a trademark that is confusingly similar to theirs. After speaking with your attorney, you learned that the most cost effective way to settling the dispute is simply to comply with the letter (litigation in federal court is very costly). So, for the next several months, or even up to a year, you worked on re-branding your company and product. To re-brand, you had to destroy all product packaging (or even products for that matter) bearing the registered trademark; you had to re-print and re-label all of your goods; you had to relinquish control over your web domain name that contains the registered mark; you had to inform everyone on Facebook, Twitter, and any other social media site about your name change. You may also lose a chance at franchising your business because no one wants to buy into litigation–particularly if the brand is not yours to begin with. In fact, if you did sell product or conduct services commercially using the registered trademark, the other company may even demand money damages. At the end of it all, you would have lost thousands, if not tens of thousands of dollars in re-branding–and this is not including your company’s goodwill lost from years of hard work in networking and marketing. Now, compare that cost to the cost of a simple trademark search.
At the Yau Law Firm, we always recommend our clients to do a trademark search before filing an application to register their trademark. Our trademark searches show us (1) whether the mark is being used at all, and (2) whether the mark is being used by a competitor selling similar goods and services. The search is helpful to determine your chances of success in getting the trademark application registered. But, it does more than that. Searches also tell our clients whether it is likely that their new brand is going to clash with someone else’s. When searches yield a green light to our clients, our clients then move forward with conducting their business and getting a trademark registered.
While it is true that the federal trademarking office requires that your trademark be in interstate commercial use by the time you file an application, you may still file an application even before your products or services have been rendered in commerce across state lines. How is this possible? The federal trademarking office allows one to file an application claiming that they intend to use the trademark, but have not yet. This then gives the filer a period of approximately six months to prove actual use of the mark.
Whether it is filing an application for a trademark, responding to office actions, or counseling clients on a trademark research, we are available for your business needs. Give us a call today to find what we can do for you!
