This post written by guest author, attorney Gianni Pattas.
Everything is perfect. You paid a graphic designer to design your brand new logo for your business. You paid the radio to run ads advertising the grand opening of your business. You paid a small fortune to have that brand new sign outside your business that makes you stand out from your competitors. There’s no turning back now, and why would you? You have spent thousands and thousands of dollars and are now ready to start your brand new business. Everything is perfect.
Suddenly, things do not seem so perfect. You get a letter after your first day of opening from an attorney telling you to cease and desist the use of your new businesses name because you are infringing the trademark rights of their client.
This is a harsh reality that many small business owners have faced. In order to save money in the short term, they did not adequately plan ahead for the long term.
Many times trademark applicants will be presented with the option of a comprehensive trademark clearance search to make sure their proposed mark is clear for use. And often, in order to save money, people will forego this option and proceed with filing of their trademark application, “blind” to what else is out there. They believe that they can scour the Internet and the federal trademark database for potential problems that they might face when using their own mark. Many businesses believe it is an important step to take. But it may not be sufficient, and in some cases, a self-guided search can even be dangerous.
A trademark attorney who deals with this subject matter on a daily basis has the resources and knowledge to do a thorough search and ensure that future problems do not arise with the use of your proposed trademark. A trademark attorney can advise you whether there are identical or similar marks already registered that may present problems downstream in the trademark application process, or whether there is use in particular geographic locations that may be specially problematic for your business, or whether there are filing strategies you can adopt when writing a trademark application based on the presence – or lack of presence – of other marks on the federal trademark registry.
So is a comprehensive clearance search for your trademark worth the money? As the common saying goes, “An ounce of prevention is worth a pound of cure.”