By Josh Gerben
A trademark is one of your company’s most valuable assets. It touches every customer that purchases your products, uses your services, or accesses your website. Protecting this asset should be a priority before your business even opens its doors.
Unfortunately, many business owners are caught flat-footed because they do not invest in properly vetting and protecting their trademarks. Here are four common trademark mistakes that I see made on almost a weekly basis:
Mistake #1: Not conducting a proper trademark search
As a trademark attorney, I get the same calls from prospective clients several times a week: a cease and desist letter has been received because the name of the product or service they are offering uses a name that is similar to a competitor. My first question is whether or not the prospective client ever conducted a trademark search prior to using the name at issue; a large percentage of these callers have never even conducted such a search.
Many business owners fail to realize that using a name, slogan, or logo should never happen without first conducting a trademark search. It is extremely costly to purchase signage, invest in logo design, and purchase printed materials, only to have to change it all.
A proper trademark search can cost $350 to $700, and is an investment that should be made over and over again. You’re investing a lot of time, both financially and in labor, to build equity in a brand. It should not be something you do without conducting the proper due diligence.
Hiring an attorney to conduct a trademark search can be a smart first step as trademark attorneys may be aware of unknown pitfalls. One well-documented example is Monster Energy’s attempt to enforce its trademark against just about anyone that tries to use the word “Monster” in their trademark. The company has recently opposed trademark applications for MONSTER MASH for a brand of wine, MONSTER MOBILE for a brand of air hoses, and MONSTER KONG NACHOS for a brand of appetizers.
It is unlikely that an entrepreneur conducting a trademark search for a brand of air hoses would think that one of the world’s largest beverage companies would oppose the trademark. That being said, a trademark attorney who is paying attention to industry news should be able to forewarn their client.
Mistake #2: Not filing for federal protection of a trademark
The other type of call I commonly receive is from someone claiming another party is using their trademark and they want to send a cease and desist letter. Again, you would be surprised how many of these business owners have not filed for federal protection of their trademark. This can make enforcing any rights they do have with a trademark to be very difficult.
For example, the first “Burger King” restaurant opened in 1957 in the small town of Mattoon, Illinois. The restaurant is owned by Gene and Betty Hoots, and they never federally registered the trademark for “Burger King.” Then, along came a national company called Burger King that did register their trademark.