If they’re diligent, lawyers should recommend you do an in-depth search called a trademark clearance before you apply with the USPTO. But maybe you’re thinking the cost of the clearance search doesn’t seem to be worth it. Which happens to be the thought that could get your business into some hot water sooner or later.
How would you feel if you spent tens – even hundreds – of thousands of dollars on your brand, product/service names, and even slogans and phrases that you could be legally forced to give up or that your competitors may freely use without infringing?
If you’re thinking it would be a silly move, you’re right!
But it’s not at all that simple.
How You Get in Trouble With Trademark Applications
Here’s a situation I often come across. Sara used an online service and Chris used a family-friend lawyer on the cheap to trademark their brands.
They then spent thousands of dollars on branding and marketing, after which they received a Cease & Desist letter. Sara and Chris were advised by each of their attorneys that renaming their business and doing a proper trademark search is going to cost a lot less than defending their trademark rights in court.
So they come to me (their new business attorney) to find a new business name, do the right searches, and prepare their application for their new brand the right way.
A trademark clearance could have prevented Sara and Chris from:
- Receiving a cease and desist letter
- Having to hire an attorney to defend their trademarks
- Losing tens (sometimes hundreds) of thousands of dollars promoting a brand that wasn’t protectable
- Having to change the name (sometimes years after adoption)
- Having to spend tens of thousands or more to re-brand
- Having to destroy “infringing materials”
- Having to educate customers about the new name, potentially losing sales from the name change
The Critical Stuff: Clearance Review and Opinion
The clearance produces comprehensive results (often 200+ pages) that take time to review and analyze. It’s critical to make sure a good attorney reviews the results of your clearance search, and creates a report and legal conclusion that sums up her opinion of your trademark.
I know what it’s like to hustle as a business owner and the need to save money.
But filing a trademark application without doing a clearance first is like skydiving without a parachute.