As the economy is on the rise and competition heats up, trademark disputes have increased, especially against start-ups. Trademark infringement lawsuits filed in the past year include Pininterest, Inc.’s lawsuit against Pintrips, Inc., a personal travel planning start-up, and FlipBoard’s lawsuit against Flowboard, a Seattle-based startup that makes an iPad storytelling application 1. Both lawsuits are still pending in federal court.
Since start-ups typically have limited resources, fighting back against claims of infringement is sometimes out of the question. Thus, the best option is to avoid any claims of trademark infringement in the first place. So, how do you do this? Below are some basic recommendations to minimize the possibility of infringing another’s trademark.
1. Know What A Trademark Is (and What It Is Not).
According to the United States Patent & Trademark office, a trademark is “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” Some examples of registered trademarks are as follows:
Trademarks are not patents or copyrights. Copyrights protect the expression of ideas but not the ideas themselves. Patents protect ornamental designs (design patents) or processes, machines, articles of manufacture, or compositions of matter that are deemed new, useful and non-obvious (utility patents). By of example and distinction, Apple® has a design patent on the design of its iPhone interface (D604,305) and J.K. Rowling has a copyright for all of her Harry Potter books.
2. Do Your Research.
Before adopting a trademark or building a brand, do your research. For example, search the Internet for similar names that are already being used. Search for as many permutations as you can think of using your favorite search engine. If there is someone out there using a similar mark in a similar industry, stay away. Find a new name. There is nothing worse than spending thousands of dollars in advertising and building a brand just to have to give it up down the line after being sued for trademark infringement. If you find nothing in your search, go to the second step and hire an attorney to conduct a more comprehensive search.
3. Hire an Attorney to Conduct a Trademark Search
After some basic due diligence on your part, hire an experienced trademark attorney to clear your trademark for use by conducting a trademark search. When conducting a trademark search, your trademark lawyer searches what trademarks are registered and what trademarks are used under common law, and how that may affect the trademark you intend to use. Your trademark attorney will also analyze whether or not your intended use creates what is known as a “likelihood of confusion.” In other words, will consumers be confused between your mark and someone else’s?
While the “likelihood of confusion” test differs in each jurisdiction, the underlying purpose of the test is to determine whether or not trademark infringement has occurred under federal and state trademark laws. In analyzing likelihood of confusion, your attorney will look at various factors but the most important ones are the similarity of the goods and services and the similarity of the marks. If your proposed trademark is very similar to another mark that’s already in use, that similarity could create what is called consumer confusion. For example, use of the mark “APPLE” for computers would be trademark infringement, as Apple, Inc. owns the mark APPLE® for computers (U.S. Reg. No. 3,928,818). On the other hand, use of the same mark in different fields can be okay. For example, the word “DELTA” is trademarked for cigars (U.S. Reg. No. 4,459,110), welding torches (U.S. Reg. No. 4,478,759), faucets (U.S. Reg. No. 3,062,101) and airlines (U.S. Reg. No. 2,058,985). While all the same trademark, they are used in connection with different goods and services. Thus, there is no likelihood of confusion, as it is unlikely that consumers would be confused as to the source or origin of those distinct goods and services.
After a search is conducted, your trademark attorney can advise you whether or not you face any risk by using and applying for federal registration of the mark. Failure to take these steps can put your company at significant risk, as defending a federal lawsuit can cost hundreds of thousands of dollars and can yield five-figure judgments against your company. In short, taking these simple steps can save you a lot of heartache and a lot of money down the line.
*Note: If you started using a trademark already and have received a cease and desist letter from a company alleging infringement, contact an experienced trademark attorney to discuss your options.