Three Things You Should Know About Trademark Infringement as a Business Owner (+ The Process)

If you’re thinking of starting a business (or already have a business in the works), the first thing you should check is if the name you want to use is already taken. For example, if you’ve decided to open a coffee shop, it’s fairly easy to determine that the name “Starbucks” is not an option. But, what about “Smith’s”? And what happens if the “Smith’s” trademark is an auto insurance company in your town? Original names are essential for three reasons: marketing power, clarity, and trademark infringement avoidance.

1. Marketing Power

Marketing power refers to a company’s relative ability to manipulate the price of an item in the marketplace by manipulating the level of supply, demand or both. Now while your name might not have a stronghold authority in your industry quite yet, it’s best to think like it will in the future when picking your business name. This is why so many businesses trademark their name as early as possible.

2. Clarity

Your business name should give some idea to the service or product that you’re selling. If it lacks clarity, you leave room for someone else to trademark a super similar name to yours. It’s also best practice to avoid trademarking a name with too many words or jargon! Try to find a good place between balancing your brand’s personality and finding the perfect amount of clarity in your business name.

3. Trademark Infringement Avoidance

Without getting down into the super nitty gritty, let’s break down trademark infringement and how to avoid it. Trademark infringement cases hinge upon the owner of the trademark showing an infringer’s use of the “deceptively similar” mark causes confusion as the source of goods or services. Trademark protection gives the business the right to stop others from using the same mark but only when the alleged trademark infringement causes likely confusion about the source of goods or services.

Trademark infringement cases are expensive because the owner of the trademark must prove that the alleged infringers confuse customers. These cases are messy, costly and last long. In order to avoid this, do thorough research ahead of time because you don’t want to get sucked into one of these legal battles. Another benefit to having a business lawyer is we can do this for you!

What’s Really in a Name When it Comes to Business Trademarks?

Before attempting to trademark your business’s name, find out if the name is available on the U.S. Patent and Trademark Office’s website. TESS, the Trademark Electronic Search System database, will indicate whether someone else has already registered the name or symbol you want to use.

While U.S. trademark protection is granted under common law to the first company to use it in its operational geographic area (regardless of registration), a company that registers the trademark first will generally have a stronger case in court.

In some situations, the similarities between names or symbols may be negligible. That’s where an experienced business attorney familiar with intellectual property law can help.

Often, there’s generally a way to accommodate both companies – especially when it comes to businesses with similar names, but dissimilar products or services (the “Smith’s” example above); those whose geographical locations may not conflict; and those whose names are too generic (for example, “The Clothing Store”).

More to Consider: Domain Extensions as Trademarks

In today’s marketplace, many businesses have both a physical location and an online presence. The question then becomes whether to trademark the company name (for example, Amazon), the URL (www.amazon.com) or both. It’s generally recommended that companies with an internet presence not register their web extensions (such as .com, .net, etc.) with their name unless planning to register the mark both with and without the web extension. The reason is that other businesses registering the same name can do so by just adding a different (non-registered) extension and cause a great deal of confusion for customers.

A prime example is Craigslist. The multi-purposed classified ad site is technically a “.org” site, but those who searched for craiglist.com or craiglist.net were often led astray. The company now has trademarks for all, so typing in the latter extensions now brings you to the main “.org” site.

If you have questions about business trademarks, give us a chat and we’ll guide you through trademark protections so your business and your efforts are protected.