The Maxham Firm has over 50 years of experience in patent and trademark law. With so many years under our belt, we have identified some of the most common mistakes many businesses make when budgeting for their new business endeavor. In this month’s series, Should You Register Your Trademark?, we will explore three common scenarios businesses face when considering whether or not they should pursue their Intellectual Property (IP) rights. If you find yourself in the following situations, it might be time to consider the merits of registering your trademark.
Situation 1: You have a new product that you are sure you can sell profitably.
You have limited funds and have decided to put everything, however minimal, into final development, scaling, and marketing your product. You have decided to delay or forego protection of your IP on the ground that it is more of a luxury; the main thing is to sell products and make enough money to break even and fund further refinements and marketing of the product.
The trademark you have developed appears to be applicable and appropriate to your product. You apply the trademark to the product and its packaging and you figure you are home free.
In the meantime, ABC Corporation has conceived of a related or competitive product and, while it is still in development, ABC filed to register the mark in the United States Patent and Trademark Office (USPTO). Their trademark is very similar to the one you have started using.
After two years, your product is well established. You have spent a considerable amount on promoting the product and have achieved significant recognition and goodwill in the marketplace for the product under your trademark.
Then a letter arrives from an attorney for ABC, accusing you of trademark infringement and demanding that you cease and desist from continuing to sell your product under the mark in which you have established substantial goodwill.
Now your choices are:
1. To fight, at considerable cost, the results of which are unpredictable:
a. You could win and be able to continue use of your mark, and possibly be able to register it, or not; or
b. You could lose and have a limited period of time within which to find a new trademark that is acceptable to you and does not conflict with ABC’s mark, with a loss of the goodwill you have established.
2. You could negotiate a reasonable time to find a new mark and cease using the one you started with.
The Lesson: The cost of protecting valuable IP should be included in your beginning budget.
It is as important as establishing the product itself. A trademark, when properly handled, gets stronger and more valuable as sales increase and time marches on.
As a good start in establishing your trademark’s viability, and in avoiding potential conflicts and costs mentioned above, we suggest that you have a professional search done accompanied by a professional attorney analysis of the results. The Maxham Firm has extensive experience with such searches and analyses, making our results quick, cost effective, and easy to understand. If the search results show that ABC already has filed to register a mark similar to yours, you can save many thousands of dollars by shifting to an alternative mark at the beginning of your venture instead of dealing with potential setbacks in the future after goodwill in your product has been established.
Simply put, by opting to invest in your company’s IP early on, you have a good chance to avoid the pitfalls of infringement which not only saves you money but also protects your earned goodwill.
Written by: Lawrence A. Maxham