In today’s business landscape, trademarks are an essential aspect of any brand’s identity. They provide consumers with a quick and easy way to identify a product or service, and they help businesses establish and protect their unique identities in the marketplace. However, before applying for a trademark, it is crucial to conduct a trademark search report.

Burger King’s and Katy Perry’s recent loss is evidence of just that. In today’s blog post, we’ll be discussing the importance of conducting a trademark search report and why it is essential for any business looking to establish a unique brand identity. We’ll be using Burger King and Katy Perry as our examples.

What Do Burger King and Katy Perry have in common?

Katy Perry as a hamubrger at the Met Gala 2019

As a result, Katie filed suit against the megastar for trademark infringement. And as of a couple days ago, Katie was awarded financial damages against Katy Perry in an amount to be determined next month.

For trademark purposes, it doesn’t matter that the spellings aren’t exactly the same. If two brands still have the same phonetic pronunciation and are providing similar products/services, the two brands can not co-exist. This would lead to consumer confusion, which is wholly counterproductive to trademark law.

Now, I honestly can’t say that I’m surprised that Katy Perry ran into a conflicting trademark. She is using a name that is so common. And I imagine there’s so many people with the exact spelling or some other variation of both “Katy” and “Perry”, who dream of being business owners. When a name is that common, you have to be first to register it!

And so, in addition to this being a reminder to build a distinctive brand name, this tale also demonstrates the importance of conducting a trademark search report.

What is a Trademark Search Report?

Before applying for a trademark, it is crucial to conduct a comprehensive trademark search report.

A trademark search report is a comprehensive search conducted to determine whether a proposed trademark is available for use and registration. It helps identify any existing trademarks or competitors that may conflict with your proposed trademark.

This report typically includes a search of both registered and unregistered trademarks in the relevant jurisdiction(s) and can provide information on similar or identical marks, pending applications, and expired trademarks. These reports also include information on common law trademarks, which are unregistered marks that have been used in commerce, but have not been registered with the relevant trademark office.

The trademark search report is an important step in the trademark registration process as it (1) helps to ensure that the proposed trademark is distinctive and unique enough to be registered, and (2) helps prevent potential legal issues if the proposed mark infringes on any existing trademarks.

These reports are provided by trademark attorneys with expertise in trademark law and trademark searching. With the help of powerful algorithms, we are able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, worldwide web results, social media, and more.

Benefits of a Trademark Search Report

Now that you understand what a trademark search report is, let’s discuss the benefits of this report for your business’ plans:

1. Saves Time & Money

One of the major benefits of conducting a trademark search report is saved time and money. Conducting a tradmeark search report can prevent you from investing time and resources into a trademark that cannot be registered or protected.

This means that your trademark search report report should ideally be completed prior to investing any money into a mark, whether it’s your brand name, logo, slogan, or some other source-identifier! It makes little sense to invest money into a mark before learning whether it will be available for your exclusive use.

Trust us. The last thing you’ll want to hear is that you’ve invested time and money into a trademark that cannot be used, and you will need to start from scratch. These are always difficult conversations to have, especially if you have already started to develop an attachment to your mark.

So after you’ve brainstormed a brand name, your immediate next step should be to conduct a trademark search report, not hire a web designer or graphic designer! Unfortunately, many business owners tend to do this out of order because they are unaware of the trademark process. So, if you’re a business owner reading this or know of any entrepreneurs, please pass this info along to your entrepreneurial friend.

2. Avoids Legal Issues

As mentioned previously, conducting a trademark search report also helps to prevent legal issues down the line.

A trademark search report can help identify any potential conflicts or infringement with existing trademarks. Having this report can prevent a business from unknowingly infringing on another company’s trademark and potentially facing legal action or even having to rebrand entirely.

In 1971, resources were limited. Burger King may not have reasonably been able to locate the local Australian restaurant operating under the same name.

However, the reports of the 2000s absolutely can identify these users! Sometimes, even a simple Google search can reveal so much. So Katy Perry’s team may not be able to share the same excuse.

It’s unclear whether Katy Perry discovered her competitor through a search report. However, what IS clear is that (1) Katy selected a non-distinctive name, as many celebrities who operate a brand under their personal names do; and (2) though she and her team were aware of the conflicting user, they proceeded to willfully infringe on Katie’s trademark rights withour regard to their previously failed attempts.

Katy’s team should have just found a more creative way to provide merchandise that excluded use of “KATY PERRY”. I’m sure this might be difficult, but these creative geniuses can figure something out! And it would have been cool for her to market this merchandise as something made exclusive to the fans of that continent. Now, unfortunately, they’ll have to pay up and rebrand if they wish to sell merchandise in Australia again.

This is why it’s best to rebrand at the onset before you’ve invested any more money into a trademark rather than rebrand after making large expenses and an expensive lawsuit.

3. Identifies Weaknesses

Last but not least, a trademark search report is important because it can help a business identify any potential weaknesses in their proposed trademark.

It is absolutely crucial that any proposed trademark submitted for registration is distinctive and unique enough to stand out in the marketplace. Conducting a trademark search report can help a business owner identify any similar trademarks or potential issues that could weaken their proposed trademark’s strength, as well as, provide insight into a business’ future expenses.

For example, if the report shows that there are many competitors with a “confusingly similar” trademark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is valuable information you should know prior to investing too much into your trademark and brand.

All the more reason to conduct your report PRIOR to hiring a professional to build your mark and/or marketing under your mark.

Conclusion

Photos from my time spent in Sydney, AU

Fall 2013 & Feb-Nov 2015

Your company’s trademark is one of your most valuable assets!

It’s what sets you apart from your competitors, builds brand recognition and trust, and is a crucial component of your marketing strategy. That’s why it’s essential to have a solid trademark management plan in place to ensure that you protect and maintain the value of your trademarks.

In today’s post, we’ll be sharing some tips to help you safeguard your business’ most valuable asset aka trademark.

1. Conduct a comprehensive trademark search

Before you start using a trademark, it’s essential to conduct a comprehensive search to ensure that your trademark doesn’t infringe on the rights of others.

A trademark search is an essential step in the process of trademark management!

Trademark attorneys have access to powerful algorithms that allow us to conduct an extensive search for any proposed business name, logo, slogan, etc. via U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, web results, social media, and more.

When conducting a search, we examine conflicting marks or names with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and more. Because all of these factors should be weighed and considered when deciding to build and invest in your trademark.

If there are many competitors with a “confusingly similar” mark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is information you should know prior to investing too much into your trademark and brand.

2. Register your trademark

Once your trademark has been cleared for use, it’s important to register it with the appropriate government agencies.

By registering your trademark, you secure legal protection and exclusive rights to use your trademark in connection with your products or services across the country. This means that others are prohibited from using your trademark or a similar mark in a way that could cause confusion or deceive consumers.

In the US, businesses should file their application with the United States Patent and Trademark Office (USPTO). The registration process involves submitting an application that includes a description of the goods or services associated with the trademark, a specimen showing how the trademark is being used, and the appropriate filing fees.

The USPTO will then examine your application to ensure that your trademark meets certain requirements, including that it is distinctive and not confusingly similar to an existing trademark. If the USPTO approves your application, your trademark will be published in the Official Gazette for a period of 30 days (“Publication Period“) , and a certificate of registration will be issued.

Once issued, you must renew your trademark within the first 5-6 years post-registration with a declaration of continued use, and every 10 years post-registration to maintain your trademark. Failure to file these renewal documents will result in the loss of your trademark rights.

3. Renew your trademark

Your trademark will last indefinitely as long as you continue to use it properly AND file the necessary renewal documents to maintain it.

Remember: Once registered, you must renew your trademark within the first 5-6 years post-registration with a declaration of continued use, and every 10 years post-registration date to maintain your trademark’s active status. Failure to file these renewal documents will result in the loss of your trademark rights.

So it’s extremely important to keep track of renewal dates and to submit renewal applications in a timely manner to avoid losing your trademark rights and all the time and hard work put into securing your certificate in the first place.

4. Maintain accurate records

Maintaining accurate records of all trademarks in your portfolio is essential for effective trademark management. This includes keeping track of registration dates, renewal dates, and any changes to the trademark or its use.

You should keep copies of all relevant documentation, including registration certificates and trademark licenses. An organized system for keeping track of your trademarks can help you manage your portfolio more effectively and make it easier to enforce your rights if necessary.

5. Monitor your trademark

After your trademark has been registered, you are expected to actively protect and enforce your trademark rights to maintain their value and prevent others from diluting or infringing on your brand. Monitoring your trademark is how you do so.

Regular monitoring of your trademark ensures that your mark is being used in accordance with its registration and helps identify any potential infringing uses.

As a trademark holder, you should perform regularly scheduled monitoring of your mark(s) online, offline, and especially via USPTO. And with a trademark monitoring service, like our Firm’s, you can monitor easily. Our Firm uses trademark monitoring software to scan the internet for unauthorized use of your trademarks on a routine basis, helping you identify potential issues early on and take action before they become bigger problems.

If interested, you should book a Trademark Discovery Call to learn more about this service.

6. Enforce your trademark

Enforcing your trademark is essential to maintaining its value and preventing others from infringing upon your rights.

Methods of enforcement include sending cease and desist letters and/or letters of protest, filing infringement lawsuits, and even engaging in alternative dispute resolution methods, such as, mediation or arbitration.

It’s important to act quickly if you believe your trademark rights are being violated! Delaying enforcement can weaken your position and make it more difficult to protect your trademark! You can check out this blog post for more on what to do if your mark is being infringed.

7. Educate your employees

In addition to hiring a trademark monitoring services, educating your employees about trademark protection and the proper use of trademarks can help prevent unintentional infringement and ensure that your trademarks are used consistently and effectively.

As we mentioned before, your employees should be familiar with your trademark portfolio, understand the importance of protecting the company’s trademarks, and be familiar with your trademark policies and guidelines.

Consistent use of your trademarks can help build brand recognition and prevent confusion among customers.

Think you’re ready for trademark registration? Take our quiz and find out!

Final Thoughts

If you own a trademark, it’s essential to protect it from infringement!

Not only is it personally offensive, but trademark infringement can hurt your business in many ways, including damaging your reputation, reducing your sales, and causing a variety of legal issues.

In today’s post, we’ll be exploring how to protect your trademark and what you should do if your trademark is being copied by a competitor!

What Is Trademark Infringement?

As defined by the United States Patent and Trademark Office (USPTO), “trademark infringement” is the “unauthorized use of a trademark on or in connection with goods and/or services in a way that is likely to cause confusion, deception, or mistake about the source of the goods and/or services”.

To put simply, trademark infringement occurs when someone uses a trademark that is similar or identical to your trademark without your permission.

This manner of infringement can take different forms, but is generally, when someone uses a mark in a way that could create confusion with your trademark or “dilute” your mark’s distinctiveness, as was alleged in the recent case of Chipotle v Sweetgreen, regarding Sweetgreen’s new “Chipotle Chicken Burrito Bowl”, later renamed the “Chicken + Chipotle Peppers Bowl”.

Essentially, trademark infringement can arise when there is a similar brand name, product name, logo, slogan, or other source-identifying mark. And it can also occur both online or offline, in advertising, marketing, and/or sales.

The Impact of Trademark Infringement

When trademark infringement occurs, a business can be serverly impacted in various ways.

First and foremost, it can cause confusion among consumers, which can damage the reputation and goodwill of the business.

If consumers are unable to distinguish between the original trademark and the infringing trademark, they may end up purchasing products or services that are of inferior quality or have no connection to the original brand, leading to a loss of sales and customer loyalty.

Moreover, trademark infringement can also impact a business’ ability to expand its brand and product offerings.

When a third party uses a trademark that is similar or identical to the original trademark, it can create confusion in the marketplace and make it harder for the business to build brand awareness and recognition. This can hinder the business’s ability to enter new markets, launch new products, or engage in strategic partnerships or collaborations.

Lastly, in addition to these tangible impacts, trademark infringement can also have intangible effects on a business’s reputation and brand identity.

If a business fails to protect its trademark, it may be perceived as weak or ineffective in the eyes of consumers, competitors, and other stakeholders. This can damage the business’s reputation and make it harder to attract and retain customers, investors, and other key partners.

Overall, trademark infringement can have significant negative consequences for a business and its bottom line.

How To Protect Your Trademark

Now that we’ve defined trademark infringement and discussed the potential impact on your business, here are some steps you can take to protect your trademark:

1. Register your trademark

This goes without saying, but the absolute best way to protect your trademark is to register it with the appropriate government agency. In the United States, you should register your trademark with the USPTO.

Registering your trademark gives you legal rights to use the trademark in commerce across the country and helps you protect your mark from infringement.

2. Use your trademark correctly

Always use your trademark consistently and correctly! Your trademark should be used as a “source identifier” only, and not as a verb or common noun. This will help establish your trademark as a distinct identifier of your products or services.

3. Monitor your trademark

Keep a diligent eye on the marketplace (online, offline, and especially, the USPTO) to ensure that no one else is using a similar or identical trademark to yourself!

Create a regular and consistent schedule to search for infringers, whether you conduct this search weekly, monthly, quarterly, etc., OR hire a monitoring service, like ours, to handle this for you!

Trademark law requires that all trademark holders “police” aka montior their trademark against misuse and infringement or else, risk cancellation of their mark.

Many entrepreneurs do not realize that a registration certificate prevents against some future conflicts, but it does NOT prevent against all.

For example: a USPTO Examiner may issue an Office Action that blocks a “confusingly similar” trademark to your own from proceeding to registration. However, your competitor still has an opportunity to overcome this Office Action if they submit a strong enough response that adequately addresses the Examiner’s concerns. And because this process is subject to human error, there may be conflicts  and other factors out there that USPTO Examiners miss for a variety of reasons we can’t control. Very commonly, there are cultural issues that can be missed and lost in translation.

So, it is your responsibility to ensure that no other business or individual uses a similar or idential trademark to your own without permission or registers a “confusingly similar” trademark that would weaken the strength of yours.

In the above scenario, you would want to oppose the registration of that mark during its Publication Period (the 30-day period where the public can oppose the registration of a trademark for good cause). But if you’re not monitoring your mark properly, you can miss this crucial window!

After all, the USPTO will NOT notify you of any copycats or “confusingly similar” trademark applications that make their way to Publication! And you don’t want to miss this window as doing so will result in more legal fees and headache.

That’s why our Firm offers a trademark monitoring service to help you with policing your mark post-registration. That way you can always get ahead of any potential issue! We’ll search for conflicting brands and marks across the USPTO, state registrations, domain name registrations, Google, social media, and more on a consistent scheduled basis (either monthly or quarterly). If interested, you should book a Trademark Discovery Call to learn more about this service.

Failing to adequately monitor your trademark can result in harm to your business’ reputation (inferior knock-offs, for example), decline in profit, and potential cancellation of your trademark!

4. Educate your employees

Familiarize your employees with your business’ trademark portfolio! You should make sure that your employees understand the importance of your trademarks and steps that they can take to protect them, as well as, train them to recognize potential trademark infringement and to report it to you immediately.

5. Be Proactive!

It’s best that you register your mark as soon as possible! You don’t want to wait for someone to infringe on your trademark before you finally protect what’s rightfully yours! It’ll be A LOT more stressful then. Be proactive and take steps to protect your brand and mark before any problems arise. 

What If My Trademark is Infringed?

Firstly, we’re sorry to hear that has happened to you. Infringement is such a yucky feeling. If you discover that someone has infringed on your trademark, here are some of the steps you should take:

1. Collect Evidence

Monitor the infringing party’s activities, and collect and document evidence of infringement.

When collecting evidence, especially screenshots, make sure the evidence includes dates and times somewhere on the page. You can opt to save website pages as PDFs for proper timestamps. And for Apple users, be sure to set the date and time to show up on your desktop’s toolbar. Timestamps always come in handy!

2. Making Contact with the Infringer

If you have in fact registered your trademark, you can send a cease and desist letter to the person or company that is infringing on your mark. This letter should demand that they stop using your trademark immediately.

Our Firm can provide you with an editable cease and desist template, or draft a customized cease and desist letter to send on your behalf.

However, if you have not registered your trademark, then your next course of action is to obtain legal counsel! DO NOT CONTACT THE INFRINGER!!

More often than not, you will make the situation worse!

Cease and desist letters are most effective when/if you have a registered trademark. Sending one without having obtained an official registration is almost like an empty threat.

And even if you have filed your trademark, you should still not send a cease and desist letter until your mark is officially registered! You don’t want to encourage the infringer to find ways to block/”oppose” your application, like during your mark’s Publication Period. You want to be completely finished with registration process, with certificate in hand!

Furthermore, conversations between opposing parties over infringement often become particulary tense! A common mistake we find is that as tempers rise, the conversation quickly turns into threats of legal action. Without realizing, you can in fact encourage the other party to take legal steps that they were not even considering, like filing a trademark application!

And once that application is filed by your infringer, you can reasonably expect $10,000+ in legal fees and potential litigation to fight for your trademark rights!

Keep in mind: Though you may be the originator of the trademark, filing your application after your infringer will not sufficiently fix this problem. The USPTO processes and examines applications in the order that they are received. So unless there are previously registered or previously filed applications in conflict with your opponent’s trademark application, your subsequent application will not be reviewed or considered in the examination of your infringer’s. At that point, you’ll need to have a conversation with a licensed trademark attorney immediately to discuss your next steps if you wish to fight for your mark!

3. Filing a Lawsuit

If an infringing party refuses to stop using your registered trademark after receiving a cease and desist letter, you may need to consider mediation or arbitration to resolve the dispute, or filing a lawsuit to protect your interests.

Mediation and arbitration can be less costly and less time-consuming than going to court, and can help you reach a resolution with the infringing party. However, whether mediation or litigation is the best course of action should be decided between you and your attorney.

Final Thoughts

In conclusion, protecting your trademark is crucial to the success of your business! By registering your trademark and taking proactive steps to protect it, you can minimize the risk of infringement!

All entrepreneurs and businesses can benefit from trademark monitoring services, and should be setting aside a budget for brand protection!

That way if your trademark is ever infringed, you’ll be better prepared to take action quickly to protect your legal rights and your business!