Almost every new trademark engagement at our firm involves one or more trademark searches. Some might argue that the search phase of a trademark project is the most important. A properly conducted trademark search reveals information that should be used to design a company’s trademark strategy. Assuming the search was well-designed and the results correctly analyzed, I can’t think of a better way to predict a trademark strategy’s likelihood of success.
We always hope that trademark search results raise no concerns for us or our clients. A clear search means we can get to work protecting our client’s valuable brand(s). Clients frequently ask us what happens if the search results are problematic. What if the trademark search reveals that there are one or more third parties out there who may have superior trademark rights over our client? What if there are one or more previously filed trademark applications or previously registered trademarks that are likely to block our client’s ability to secure trademark protection?
The answers depend on myriad factors. Here are four options:
- Pretend there is no such thing as trademark law. Sometimes clients who get troubling trademark search results disengage and do no further work to build and protect their trademark portfolios. This is usually a mistake. The fact that there are others out there who may stop you from using your brand name amounts to a ticking time bomb. It is better to address this issue head on, even if it means making some difficult decisions about rebranding. Being forced to rebrand by a court or third party who is coming after you for trademark infringement is unpleasant. Experience teaches it is far better to control the direction and timing of a rebranding process yourself.
- Pretend the search results are wrong or don’t apply to you. One option is to ignore the search results. Sometimes clients want to still use the mark and apply for trademark protection anyway. This is an even worse idea. First, you still have all the problems listed in #1 above, but you’re broadcasting to the world your use of a problematic mark by filing a federal trademark application (which becomes public record). Second, whoever files the application must affirm, under penalty of fine and/or imprisonment, that they believe nobody other than the applicant has the right to use an identical or confusingly similar mark in commerce in conjunction with the relevant goods or services. I can assure you our firm takes that statement seriously and will not apply if we know of a clear conflict revealed through a trademark search.
- Rebrand. Many clients have heard me say this – some of the most difficult work I have done as a trademark lawyer has been counseling clients through the rebranding process. If we’re lucky, we get to clients early enough that they are doing the important work of clearing and protecting their trademarks prior to having invested much time or money in their brands. Unfortunately, often the bad news comes when a company is in full-on growth mode. We have seen clients have to walk away from a brand name after having spent six figures on style/logo development, manufacturing, marketing, promotion, etc. I cannot overemphasize the importance of clearing and protecting your important trademarks early in the life of a business.
- Negotiate. Sometimes it is possible to negotiate a trademark co-existence agreement with another party. The circumstances in which this option makes sense are too numerous to list here and are nuanced and complicated. Nevertheless, it is important to note that bad trademark search results aren’t always a death sentence for your brand. If you are in an inferior negotiating position relative to the other party, expect to have to pay something to the other party and agree to certain restrictions on the use of your trademark. Negotiations sometimes reveal that it would be easier and less costly to rebrand rather than agreeing to an unreasonable third party’s demands.
These are four options with a short description of each. Remember, every situation is different, and there are other options not listed here. The bottom line is that (a) trademark clearance work should occur as early in the life of a business as possible, and (b) problematic trademark search results should be dealt with quickly and directly with the help of seasoned trademark professionals.
CLARK.LAW
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