C3 Patent and Intellectual Property Law

Feb172010 | Steve O'Donnell

Two trademark cautionary tales

Over the past month I’ve had two people come to me with serious trademark issues that could have been easily avoided by speaking with a trademark attorney early in their branding process.

In the first instance, my client, a business that is primarily intrastate, but does a small amount of interstate commerce, received a letter from an attorney warning them that another business has filed a registration for the trademark and plans to enforce it if my client attempts to expand beyond their current geographic market. My client was using the name first in certain markets, so they can continue to use the name as they have been, but will run into trouble if they try to expand. My client doesn’t want to give up the name, but does have plans to expand, which is where their problem lies.

Since my client was engaged in a small amount of interstate commerce, they could have registered the trademark years before the other registrant came around. Unfortunately, they didn’t think about trademarking until they ran into this trouble. We’re still considering possible courses of action.

In the second instance, my client started using a trademark that is very similar to a mark that had already been registered. It was a completely innocent mistake and my client didn’t try to leech off the reputation of the other company, but that doesn’t matter. Trademark law attempts to eliminate consumer confusion and in this case, the marks were close enough to each other, and in the exact same market, that a determination of anything but trademark infringement is unlikely. That client has two options: fight it, or stop using the name. Fighting it is expensive and the likely outcome is not good, rolling over means that my client loses a large amount of their name recognition and google-juice.

If that client had engaged a trademark attorney to vet their proposed name or to try to register that trademark, the other user would likely have been identified and the problem avoided.

Compared to the time and money involved in creating and building a brand, having an attorney protect it is a small expense. Yet, without that relatively minor investment, all of the rest can be a waste.