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Posted on Mar 25, 2014

Clearing and Protecting Your New Name

Clearing and Protecting Your New Name

Choosing the name of your business, or the name of your business’ principal product or service, can be one of your new company’s most important and lasting decisions. The name you adopt in your nascent stages may form the foundation for your brand, to which you may end up devoting significant resources in building consumer recognition. To the extent that any name (or, for that matter, any distinctive phrase, slogan, logo, symbol, design, color, or other device) that you adopt distinguishes the products or services you offer to the public from the products or services of others, such name or device may function as a key trademark or service mark (a “Mark”) of your company.

You might assume that your chosen name is available for use or registration because, for example, the corporate name was deemed available when registering with the relevant Secretary of State or because the name did not appear in a search of the U.S. Patent and Trademark Office (the “PTO”) online database. In fact, your proposed name’s availability for purposes of a given state’s incorporation process typically has little bearing on its availability for use as a Mark. Nor does the absence of a third-party registration for your exact name necessarily determine its availability as a Mark.

In the United States, generally, an entity obtains rights in a given Mark, in a given region, in connection with given goods or services, based on that entity’s commercial use—not registration—of such a Mark. Accordingly, based on your use of your Mark alone, you may be in a position to bring claims against others who make later commercial use of “confusingly similar” Marks (that is, not only identical Marks but also any similar Marks that are likely to cause the relevant consuming public to be confused, mistaken, or deceived about the origin of goods or services or about the association, affiliation, or authorization of a use). Conversely, third parties may be able to take action against you, should you make commercial use of a name confusingly similar to a Mark in which they have established rights.

For these reasons, to adopt a new name or Mark with confidence, we encourage thinking about the process in two phases—clearance and prosecution—as follows:

The Clearance Phase. Conducting a search of existing Marks prior to adoption or use of your new name may reveal potential conflicts and facilitate modifications early on. Clearance is an important element of a strategy to minimize liability. Indeed, some courts have even found that failure to conduct a search before adopting a Mark can, under certain circumstances, support a finding of bad faith, subjecting the adopter to enhanced damages for willful infringement. Given the challenges of informally searching for Marks that are not only registered, but also in use, and not only identical, but also confusingly similar, practitioners often recommend commissioning an outside information services company to conduct a more formal “full search.” A full search is an often lengthy report identifying potentially conflicting registrations and applications as well as Marks in use at “common law,” as evidenced by searches of numerous sources and databases. An attorney may then review those full search results, often exploring certain references in greater detail. In specific cases, references may require more extensive investigations, sometimes conducted by outside agencies, to help resolve questions about the nature, scope, or history of a third party’s use. Given that the full search process tends to be somewhat involved, attorneys sometimes recommend conducting a preliminary or “knockout” search prior to proceeding with the full search. A knockout search might reveal more easily-identified identical or virtually identical third-party Marks, potentially rendering unnecessary a more expensive full search. In any case, skillfully-conducted clearance should assist in developing a strategy for both use and, if appropriate, registration.

The Prosecution Phase. In the event that your name is deemed reasonably available for registration, and assuming no significant barriers to registration exist on “absolute grounds” (e.g., descriptiveness, usage as a surname, deceptiveness), you may wish to apply for a federal trademark registration with the PTO. Prosecuting an application involves, in addition to paying designated fees and satisfying other PTO requirements, demonstrating to the PTO that you are using a sufficiently distinctive Mark, not confusingly similar to existing registrations or prior applications, in interstate commerce, and in connection with the goods and services for which you apply. (Although it should be noted that, even if you have not yet initiated use of your Mark, it may be possible to apply for your Mark on an “intent-to-use” basis.) Should you successfully obtain a federal registration, the PTO will in future years require you to make certain filings and pay certain fees to renew and maintain your registration.

A federal registration is not necessarily required to establish trademark rights (because, as noted above, trademark rights in the United States may arise from mere use in commerce of your Mark); however, obtaining a registration on the PTO’s Principal Register provides several advantages, such as:

(a) a legal presumption of your ownership of the Mark and your exclusive right to use your Mark nationwide in connection with the goods and services listed in your registration,
(b) constructive notice to the public of your claim of ownership in the Mark,
(c) the right to use a federal registration notice, such as the “®” symbol, in connection with your use of the Mark (which may preclude a innocent infringement defense),
(d) the potential to deter third parties from using or applying for a similar Mark for a related good or service (and the potential, in the event any such third party anyway applies for a registration, that the PTO will refuse their application),
(e) a basis to obtain registrations for the Mark in certain foreign countries, and
(f) the ability to record the registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods.

The registration process can take time, particularly if it is necessary to overcome “Office Actions” from the PTO initially refusing registration or oppositions filed by third parties objecting to registration of your Mark. In the end, however, a proficiently-prosecuted application may result in a registration that proves a key component of your brand and a valuable asset of your business.

Farkas & Neurman regularly assists and advises clients as to evaluating, clearing, and registering Marks. Should you have any questions regarding the implications of adopting a particular name or Mark, or if you would like to discuss clearing or prosecuting your new name or Mark, please feel free to contact us at hello@farkasneurman.com.

© 2014 Seth Shelden

Creative Commons Attribution-NonCommercial-NoDerivatives 4.0 International License.

Clearing and Protecting Your New Name by Seth Shelden is licensed under a Creative Commons Attribution-NonCommercial-NoDerivatives 4.0 International License.

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