I spoke this past weekend at Florida DrupalCamp on intellectual property law and compliance issues for web developers. It was a great session, with lots of interesting questions from those in attendance, and I hope to incorporate many of them into future posts. I think a good place to start is a question that I am asked a lot by aspiring entrepreneurs, which is “when should I consider registering for a trademark in the startup process?” My answer to this is that it should be considered as early on in the process as possible. Of the many steps that it can take to start and grow a business, sometimes the process of considering whether a company or product name is capable of being registered for a trademark, as well as registering such a name, can tend to end up on the back burner. This can be a costly tactical error for a small business, as proceeding without the use of a company or product name without an idea of whether it could potentially generate a trademark infringement claim can not only result in litigation from another trademark owner, but also mean that the company or product may have to change its name and lose any accumulated recognition in the minds of consumers.
While of course I always advise that entrepreneurs consult with an attorney to help them navigate the trademark search and registration process, there are also simple steps that people can take to get an idea of whether a name is available for use for a company or product. One way is to perform an internet search for that name and the related industry in which it would be used to see if there are any results that could potentially overlap with what you have in mind. The related industry is important, as trademark registrations with the United States Patent and Trademark Office (USPTO) are issued by the class of goods or services for which the mark will be used. This is why you will see in some instances the same name being used for different classes of goods or services, such as Delta Airlines and Delta Faucets. Now an internet search may not give you all the information you would need about whether a name is available for use, or is already registered as a trademark. This is why it is also a good idea to run a search of the trademark registrations with the USPTO on its website to see if there are any names or logos that could conflict with the name you are looking to use in the search results. Of course, the next logical question that may come to mind is if I can do these searches myself, why would I need to hire an attorney? It’s a good question, and the answer is that an attorney with knowledge of trademark law can assist you in performing a fuller search of whether a name or logo is capable of being registered with the USPTO. Why does this matter? As trademarks are not only a matter of federal law, but also state law, there can be registrations or uses of the name in question that may not show up in an internet search or search of the federal database that may show up in a fuller knock out search. Such a search would also include domain name registrations, and if you have ever wondered why some tech companies have such strange names, it is often a result of trying to find an available domain name. Further, an attorney can advise you as to the potential risk that similar or matching results may present, and help a company choose another name if the risk is too great.
No matter which route you opt to take in terms of trying to determine if a name is available for use, and ultimately for registration as a trademark, the point is that these discussions need to take place early on in the startup process. Think about it- if you’re going to spend your time, energy, and money on developing a new product or company, don’t you want to do so wisely? Litigation is expensive and time consuming, so if doing some basic searches can help you head off potential problems, that is time (and money) well spent.