I like to say that, “America runs on contracts”! A little spoof of Dunkin’s popular slogan lol…

But it’s true. Contracts are an essential part of every business transaction! That’s why it’s so crucial to draft a contract that accurately reflects the intentions of the parties involved and accounts for every possible problem we can think of. And as you can imagine, doing so is no easy feat!

Contract drafting is a complex process that requires careful attention to detail and legal knowledge. Even minor errors or omissions in a contract can have serious consequences, including disputes, litigation, and financial loss for a client.

So in today’s blog post, we will discuss 7 most common and costly mistakes to avoid when drafting a contract.

7 Common Costly Mistakes to Avoid

Mistake #1: Failing to Define the Parties and the Purpose of the Contract

One of the most fundamental aspects of a contract is to identify the parties involved AND the purpose of the agreement. Without a clear definition of who the parties are and what the contract is intended to achieve, the contract is likely to be unenforceable.

My first step whenever I sit down to draft a contract is to fact-check and research  the parties. It is essential that I clearly identify the parties, including their legal names, addresses, and current contact information, to avoid any confusion or ambiguity.

And to ensure proper due diligence, you should not only identify the parties, but also check whether each business is in active compliance/status with their state.

If a company fails to renew their entity’s registration status for a certain period of time, many states will administratively dissolve the company! This would mean that you’re essentially entering into an agreement with a company that no longer exists. This mistake could have been easily avoided with a bit of research on the state-appropriate company registry or even with a request for compliance documents to the other party! 

My next step after party identification is to draft the purpose of the contract. In the preamble of each contract, the purpose should be clearly defined, including the goods or services being exchanged, the timeline for performance, and any other relevant terms. This information should be provided in clear and concise language to ensure that all parties understand their obligations and expectations at the onset.

Mistake #2: Failing to Define Key Terms and Concepts

Another common mistake in contract drafting is failing to define key terms and concepts used in the agreement. This mistake can lead to misunderstandings and costly disputes later down the road.

Key terms may vary depending on the type of contract, but I often tend to include definitions for IP terms, such as, “Intellectual Property Rights”, “Trademarks”, “Trade Secrets”, as well as, general terms, like “specifications”, “goods,” and “payment”. These terms should be defined in clear and precise language, leaving no room for interpretation. Of course, with something as important as your trademark, for example, you want to have that clearly defined and protected in writing.

These terms or concepts should be defined early in your contract, preferably the first section after your preamble, to ensure that all parties have a clear understanding of their meaning.

Failure to define key terms can result in confusion and disagreements that could have been avoided by providing clear definitions at the onset.

Mistake #3: Failing to Include Appropriate Warranties and Representations

Warranties and representations are critical components of many contracts, particularly those involving the sale of goods or services.

These provisions set out the expectations and promises made by the parties regarding the quality, performance, or other attributes of the goods or services being exchanged.

It is essential to include appropriate warranties and representations in the contract, including any express or implied warranties required by law. Failure to do so could leave one or both parties vulnerable to legal action in the event of a dispute.

For example, if you are working with a graphic designer to design your logo, you would want to have a warranties and representations clause, stating that the work they’ve provided you is (1) solely original, not belonging to anyone else, (2) not to be repurposed for anyone else, and (3) a possible “indemnification” for any third party infringement suits that may arise from this work. This would be the case if the graphic designer has provided you with a logo that infringes on another user’s trademark rights. Should the infringed party seek monetary relief, the graphic designer is accepting fault and would be on the hook, not you.

Mistake #4: Failing to Consider Governing Law and Jurisdiction

This mistake is relatively straight forward, but surprisingly, commonly missed in contracts.

Contracts are subject to specific laws and regulations depending on the jurisdiction in which they are signed. Failing to properly consider the governing law and jurisdiction could result in a contract being unenforceable or subject to legal challenges. The applicable law and jurisdiction should be clearly stated within the agreement.

Many parties prefer for the governing law and jurisdiction to be the state in which they reside or operate their business. This ensures that should a dispute arise, they won’t have to spend additional money on travel expenses to appear in court. However, whether that state is truly the most advantageous for their business dealing depends on the state law itself. An attorney can help you decide the appropriate jurisdiction and setting for any potential disputes.

Mistake #5: Failing to Address Termination and Renewal

Good contracts should include clear and concise provisions outlining the conditions under which the agreement may be terminated and the process for renewing the contract if both parties wish to continue working together.

Typically, termination clauses consider factors like “inability to pay”, “impossibility of performance”, “mistake, fraud or misrepresentation”, “breach of contract”, and “end date/date of completion”. However, depending on the type of contract and business strategy, this section of the contract may vary drastically in language!

For this reason, we always ask our clients to discuss the frustrations and issues they are currently facing in business before we begin drafting any contract. Hearing their concerns allows us to to draft a contract that takes into account and/or prohibits some of the bad actions and problems our clients are hoping to avoid. Their concerns are then expressly prohibited in a termination and renewal clause alongside some tough consequences for the signing party.

For example, if your company is hiring an employee, you may want to list specific misconduct or violations that can lead to termination of an employee, like lateness, unsatisfactory performance, sick leave, etc.

If you’re hiring an Influencer or Ambassador, this section may explicitly define examples of misconduct and behavior that can potentially harm the company’s image/reputation should the influencer engage in them, as well as, place restrictions on the ambassador’s future business deals. Disney would not want Halle Bailey (the “Little Mermaid”) or any of their child actors to start an “Only Fans” or post explicitly sexual photos. Louis Vuitton wouldn’t want their ambassadors to wear Gucci in photos or media campaigns for a set period of time.

Or if you’re collaborating with another company, maybe the termination clause focuses on end date/date of completion because you only plan to authorize use of your Intellectual Property for one specific collaboration. Or maybe your deal is not defined by one collaboration, but instead a license to use your IP for a limited period of time.

Thus, a clear and concise termination and renewal clause will ensure that all parties understand their obligations and the consequences of failing to comply with the terms of the agreement. Failing to address both could leave one or both parties vulnerable to unexpected changes in the agreement and/or potential financial loss.

Mistake #6: Failing to Address Dispute Resolution

Although we hate for this to happen, realistically, disputes are common in business transactions. So, failure to address dispute resolution in the contract is not only a big mistake, but can lead to costly legal battles.

Though the strategy of resoltuion may vary, your contract should include provisions that clearly outline the process for resolving disputes, including timelines, selection of a mediator or arbitrator if preferred, governing law and choice of venue for litigation, and any other relevant details to aid in the resolution of a conflict.

Mistake #7: Failing to Consider Future, Changes, and Amendments

The last contract drafting mistake and probably the most costly is a failure to consider the future.

Building upon Mistake #6, contracts should be drafted with the future in mind. And this is a skill that licensed attorneys have been drilled and trained to recognize and apply.

When drafting a contract, attorneys are constantly going through “What if…” scenarios in our minds and drafting language that will solve an issue that hasn’t even happened. A licensed attorney is essentially a trained overthinker. We prepare for the worst case scenario.

So, failing to consider potential issues, changes or amendments to the agreement could leave one or both parties vulnerable to unexpected changes in the relationship or financial loss.

It is important to predict problems that haven’t occurred, as well as, include provisions for amending the contract in the future, including the process for making changes, the parties authorized to make changes, and any other relevant details or worst case scenarios. This will ensure that the agreement remains relevant and enforceable over time.

Conclusion

In conclusion, contract drafting is a complex process that requires careful attention to detail and legal knowledge. By avoiding these common mistakes, businesses can reduce their legal risks and maintain positive business relationships with their partners and clients. And failing to avoid these common mistakes could have serious consequences, including disputes, litigation, and financial loss.

Moreover, unlike the contracts you may find online, working with an attorney will ensure that your contracts are accurate, enforceable, and above all, actually protective of your interests. It’s always better to have a contract suited to your specific needs and painpoints rather than a standard/generic template that can’t speak to the actual intention of the parties, fails to include industry-specific terms, leaves no representations, fails to consider governing law, termination, dispute resolution, and the future.

Don’t overlook the importance of properly attorney-drafted contracts for your business success. Take the necessary steps to protect your interests and business deals! It can make a big difference in the long-term success of your business.

Let’s talk contract drafting or have us review that outdated contract. Book your legal solution today!

On May 9th, we learned that the United States Patent and Trademark Office (USPTO) has VERY quietly released a proposal to increase their fees.

The price is going up!

We shared this news with our newsletter first. So you should sign up here!

This price change is estimated to go into effect in November 2024, but it wasn’t too long ago that the USPTO increased some of their fees in 2021, after COVID left them severely backed-up.

Now, not only are they planning to increase the cost of items/services AGAIN, but they also plan to charge for items that have never incurred an additional fee before! Increased fees exist for almost everything ranging from $50 to $200+. Under this new proposal, a trademark application for 1 mark/class, currently $250, will start at $350 with additional fees for simple customizations.

Bottom line: They are literally brainstorming “creative” ways to make you spend MORE money.

They say that this price change is all in an effort to improve processing times, recover Office costs, and enhance the quality of incoming applications. And they conveniently failed to mention that this may also be an attempt to combat the HOARDS of fraudulent Chinese applications left uncheck for YEARS that are slowing down the Office.

But still, we hate to see that this is their proposed solution.

It seems that once again, they’ve determined that the easy fix to their backlog is to raise the bar to entry. Decrease public access to trademark registration by increasing the financial commitment of new trademark applicants.

And though increased costs would very likely discourage unserious entrepreneurs from filing trademarks, unfortunately, many SERIOUS business owners will be penalized, as well. Especially small business owners with big dreams and real hustle. They’re going to be the ones to feel the financial strain AND the pressure to self-file and risk making a careless mistake.

Over 60% of trademark applications filed are initially rejected.

These odds decrease with an attorney. These DIYers, hoping to save money, in fact stand to lose funds AND time spent if they (1) don’t have an attorney-provided search report, and (2) make errors too serious for an attorney to later come in and correct.

More improperly drafted applications and uninformed applicants won’t “improve the quality of incoming applications” nor processing time. The USPTO will just collect their money, and the DIYers will be without a trademark certificate.

So if you’ve been procrastinating on protecting your brand, this is a sign to get serious about it. Decide whether your brand name, logo, slogan, and/or other brand assets are worth protecting!

You don’t want to deal with these upcoming fees nor the eventual influx of applications before the fee increase.

And if you think your brand is worthy of protection, let’s get started on your trademark journey immediately! 

Put some (R)espect on your name!

POP QUIZ: Take our Brand Name Quiz

Find out whether your brand, product, course, or event name is ready for trademark registration! Take our quiz below.

Since opening this Firm, I’ve dreamed of having an office space where I can proudly put our accomplishments on display. Like a parent sticking their child’s artwork on the fridge. Or a trophy cabinet.

And I thought this was a dream delayed due to the fact we’re a fully virtual Firm.

Until I had an epiphany, I can still make this dream a reality. Just make it virtual.

It’s so obvious; I can’t believe I didn’t think of this before. So today, I’m so happy to present to you Our Trademark Wall of Fame!

If you’re starting a business or launching a product/service, you’ve probably heard of both LLCs and trademarks. Both of these terms are essential for any business owner to understand, but they serve entirely different purposes! In today’s post, we’ll break down the differences between LLCs and trademarks and explain why your business probably needs both!

What is an LLC?

LLC stands for “Limited Liability Company”. It is a type of business entity that separates and protects a business owner’s personal assets from that of the business’s liabilities.

An LLC has its own tax ID number (EIN), can own assets, can enter into contracts, and can sue or be sued. As such, registering an LLC simply signifies that you are operating “X Business Name within X state”. This along with your EIN helps the IRS identify your business come tax season.

So in simple terms, your LLC’s name could be your trade name, i.e. the name your business is commonly known as or the name you use when advertising or doing business (DBA – “doing business as”). (And your trade name may even be the same as your trademark if you choose to register your brand name).

One of the main advantages of forming an LLC is that it provides personal liability protection. This means that if the business is sued or owes debts, the members’ personal assets, such as their homes or cars, are protected. Another major advantage of an LLC is that it offers flexibility in how your business is managed and taxed.

However, a disadvantage — or, a very popular misconception among new entrepreneurs — is that registering your LLC prohibits others from using your LLC name aka trade name. That is completely false.

Two or more businesses can share the same name as long as they operate within different states. The purpose of an LLC is not to prevent others from using your business name; it is just intended to identify the name and state of your business’ operations.

What is a Trademark?

A federally registered trademark, on the other hand, is a symbol, word, or phrase that identifies and distinguishes a product or service from others across the country.

The purpose of a trademark is to protect a company’s brand identity and prevent other businesses from using your exact and/or a similar mark (brand name, logo, slogan, or other source-identifying mark) that could cause confusion among customers.

Though both LLCs and trademarks —specifically a brand name trademark — have a “name” component to them, trademark registration is what protects your business’ money-makers, making it the most valuable business asset you can own. 

Once a trademark is registered with the United States Patent and Trademark Office (USPTO), the owner has exclusive rights to use it in connection with the products or services it represents. For a full list of all the benefits granted through trademark registration, check out this blog post.

And we’ve created a simple Venn Diagram to help you remember:

Difference Between LLC and Trademark

So now that we’ve defined LLCs and trademarks, let’s explore the differences between them.

Legal Entity vs. Intellectual Property

We alluded to this before, but a major difference between these two terms lies in the fact that one is a legal entity and the other an intangible property.

I like to say that your LLC is how the state recognizes your business, but your trademark is how the country (and the world) identifies your brand.

By forming an LLC, the IRS knows that you are operating X Business Name within X state. However, by registering your trademark, the entire country is put on notice that X Business Name — or any other other mark — belongs to this source and prohibits anyone from using anything identical and/or remotely similar to X Business Name in your exact and/or similar industry.

Ownership and Liability

Another significant difference between an LLC and a trademark is ownership and liability.

An LLC is a business entity owned by one or more members, whereas a trademark is an intellectual property right owned by an individual, multiple individuals, or a company, like an LLC.

And in fact, many prefer that their LLC own their own trademark(s) rather than to file them as an individual(s), making them subject to their own personal financial situation.

Moreover, remember: LLCs offer personal liability protection to the members, whereas trademarks do not.

Registering your trademark offers an entirely different type of protection, specifically “brand protection”, as it mimimizes customer confusion, distinguishes your brand from copycats, and ultimately upholds your business’ reputation by preventing identical and/or similar marks from entering in the marketplace.

Registration Process & Costs Associated

Lastly, the process and costs of registering an LLC versus registering a trademark couldn’t be any more different!

To form an LLC, you must file an articles of organization within the state the business will operate and pay a fee that varies from state to state.

In New York, for example, the state filing fee is $200 with a biennial renewal fee of $9. Notwithstanding the 6-week Publication requirement for New York LLC’s, that many DIY entrepreneurs unknowingly skip, the process is relatively straight-forward and less time-consuming.

Registering a trademark, on the other hand, is a lot more complex and more expensive!

Currently, due to COVID-19, trademark registrations take an estimated 12-18 months to complete compared to the previous 6-9 months timeline. And it takes a minimum of 9 months before your application is even reviewed by an Examiner compared to the previous 3-month wait! With more time on their hands, so many entrepreneurs began to take their brands more seriously, including filing trademark applications. Now, the USPTO is severely backed up.

This means that if you choose to work with an attorney, you will likely be working on this project for over a year. 

Furthermore, the process of registering a trademark also involves more steps when working with a licensed trademark attorney. We perform a comprehensive trademark search, review the results and provide you with our legal analysis in the form of an Opinion Letter, research and collect information needed for your application, draft and file your trademark application, monitor for conflicting marks, respond to potential Office Actions issued by an Examiner, and conduct other ancillary services. 

Due to the amount of research and time dedicated to a single trademark application, registering a trademark is more expensive than forming an LLC. The cost of an application alone ranges from $250 to $350 per mark/class.

Final Thoughts

In summary, an LLC and trademark are two essential concepts that every business owner should understand and likely own. They serve entirely different purposes! 

And so, deciding whether to form an LLC or register a trademark depends on the business’s needs and goals. If personal liability protection is a concern, forming an LLC may be the right choice. If protecting a brand’s identity and preventing other businesses from using a similar mark is the priority, registering a trademark is necessary. And we venture to think that both will be important to new entrepreneurs.

Our Firm can provide you with valuable guidance in setting your business up as an LLC or with registering a trademark. Book a Discovery Call or Trademark Discovery Call for your legal solution!

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.

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

As an entrepreneur or business owner, I’m sure you can appreciate how important it is to protect your brand.

Your brand is the identity of your business and it’s what sets you apart from your competitors! And if by now you haven’t realized, one of the most effective ways to protect your brand is by registering a trademark!

We’ve defined it before, but as a quick refresher:

A trademark is a symbol, word, or phrase that distinguishes your goods and/or services from those of your competitors. It can be a brand name, logo, slogan, colors, or even a sound or a scent.

Registering a trademark gives you exclusive rights to use that mark in connection with your business, and it can provide numerous benefits that can contribute to your overall business success!

Here are some reasons why you should consider registering a trademark:

1. Protects Your Brand

Trademarks protect your brand identity and help prevent competitors from using similar marks that could confuse customers. By registering a trademark, you prevent others from using your brand name or logo for their own profit, which can ultimately dilute your brand’s value and affect your brand’s reputation.

For example: Imagine that you own a successful coffee shop named “Mocha Joe’s” that has a recognizable logo featuring a steaming cup of coffee.

Without a trademark, another coffee shop in your area could easily create a similar logo with a steaming cup of coffee and the name “Mocha Bros” to try and capitalize on your brand’s success. This could lead to customer confusion and ultimately hurt your business! 

You should be the only person allowed to capitalize off your hard work!

2. Builds Trust and Credibility

People love to support brands that take their business seriously!

When customers see your registered trademark, they know that your business is legitimate and credible. A registered trademark gives customers confidence in your brand, and they’re more likely to trust and do business with you.

For example: Imagine that you’re a small business owner looking for a supplier of high-quality organic ingredients for your products. You come across two suppliers with similar products and pricing, but one of them has a registered trademark while the other does not.

Which one would you choose? Most likely, you would choose the supplier with the registered trademark because it gives you confidence in their business.

You would assume that they are fully dedicated to their business, and in turn, fully committed to making their customers happy.

3. Prevents Legal Issues

By registering a trademark, you proactively protect yourself from legal issues that could arise from infringing on someone else’s trademark.

If you use a mark that is similar to another brand’s trademark, you could be liable for trademark infringement. This can result in costly legal battles and damage to your business reputation.

For example: Imagine that you’re a fashion designer who creates a line of handbags with a distinctive logo featuring your initials. You launch your brand and start to gain some popularity, but then you receive a cease and desist letter from a large luxury fashion brand claiming that your logo is too similar to theirs! Without a registered trademark, you could be forced to rebrand your entire business, which could be a huge setback.

This is also why it’s important to go through the process of trademark registration prior to building and investing into a mark. The best way to learn whether you’ve infringed on another brand is to obtain a comprehensive trademark search report with a licensed trademark attorney. Your attorney will provide you with valuable analytics, analyzing potential conflicting marks and brands, and provide you with legal strategy to circumvent these issues.

If we determine that you should rebrand due to a similar logo already in existence, then you’ll know the risks ahead of time and avoid wasting any more money on an infringing mark.

4. Increases Brand Value

A registered trademak increases the value of your business!

If you ever decide to sell your business, having a registered trademark can make it more attractive to potential buyers. A trademark is an asset that can be licensed or sold, which adds to your overall business value.

For example: Imagine that you’ve built a successful company that has a registered trademark for your brand name and logo. A larger competitor approaches you with an offer to buy your business. Having a registered trademark can make your business more attractive to the buyer because they know that your brand is legally protected and has a strong reputation.

5. Provides Nationwide Protection

When you register a trademark with the U.S. Patent and Trademark Office (USPTO), you gain nationwide protection for your mark. This means that no one else can use your trademark in connection with similar goods or services throughout the United States.

For example: Imagine that you own a restaurant in New York City that has a registered trademark for your restaurant name and logo. If someone tries to open a restaurant with the same name and logo in California, you can take legal action to prevent them from doing so.

Many entrepreneurs mistakenly believe that having an LLC alone can prohibit name and logo theft, but only a registered trademark is capable of doing that! Check out this blog post to learn the differences between an LLC and trademark.

If you’re ready to get started on your trademark journey, book a Trademark Discovery Call today to learn more!

6.Can Sue and Recover Treble Damages

In addition to the exclusive rights afforded to you through trademark registration, another added benefit is the ability to sue anyone who uses your trademark without permission.

If someone uses your trademark without permission, you may be able to sue them for trademark infringement. And if you win your lawsuit, you may be entitled to recover damages, including lost profits and any profits the infringer made from using your mark.

Furthermore, if the court finds that the infringement was willful or intentional, you may be entitled to treble damages, i.e. three times the amount of damages that you actually suffered as a result of the infringement. If you can prove willful infringement, you could potentially recover three times the amount of damages that you suffered.

Treble damages are a powerful tool for deterring would-be infringers and compensating trademark owners who have suffered losses as a result of infringement.

However, keep in mind, that proving willful infringement can be very difficult. You will likely want to work with a qualified trademark attorney to help you navigate this legal process.

7. Prevents Cybersquatters

“Cybersquatting” is the practice of registering, trafficking in, or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. Cybersquatters register domain names that are identical or similar to well-known trademarks in order to divert internet traffic to their own website, potentially causing confusion among consumers and diluting the value of the trademark.

And unfortuantely, there are TOO many social media coaches and other online personalities encouraging other entrepreneurs to committ this very crime. Please do not do this!

Fortunately for you though, by registering your trademark, you can prevent cybersquatters from creating infringing domains. The Anti-Cybersquatting Consumer Protection Act (ACPA) makes it illegal for anyone to register a domain name that is identical or confusingly similar to a trademark with the intent to profit from it.

If someone does register a domain name that infringes on your trademark, you may be able to take legal action under the ACPA. This can include filing a lawsuit to recover damages and/or requesting that the domain name be transferred to you.

By registering your trademark and taking proactive steps to prevent cybersquatting, you can protect your brand and prevent others from profiting off your hard work and goodwill. This can help ensure that your business remains successful and profitable over the long term.

8. Blocks Infringing Products Bearing Your Mark

If you have a registered trademark, you can record it with the U.S. Customs and Border Protection (CBP) agency. This means that CBP will monitor imports to the United States and block any products that infringe on your trademark.

This service is particularly important if you manufacture products overseas or if you sell products online that can be shipped from overseas. In either case, you want to make sure that counterfeit or infringing products bearing your mark do not make it into the United States.

By recording your trademark with CBP, you give them the authority to seize any infringing goods at the border. This helps protect your brand and reputation, and ensures that counterfeiters are not able to profit from your hard work.

If you suspect that someone is importing infringing goods into the United States, you can work with a trademark attorney to file a CBP e-Recordation application. Once your trademark is recorded with CBP, they will notify you of any suspected infringing goods and take the necessary steps to prevent them from entering the country.

9. Can License Your Trademark

We touched on this a bit in reason #4, but another benefit of registering your trademark is the ability to license your trademark to other companies. You can give other businesses the right to use your trademark in exchange for a fee.

Licensing your trademark can be a lucrative way to generate additional income for your business.

For example: If you have a successful brand, you may be able to license your trademark to other companies that want to use your brand name to sell their own products.

When you license your trademark, you can control how it is used and ensure that the products and/or services being sold under your mark meet your quality standards. This helps protect your brand and reputation, and ensures that consumers associate your mark with high-quality products or services.

But before licensing your trademark, be sure to sit down with a trademark attorney to draft a licensing agreement that outlines the terms of the arrangement! This agreement should address issues, such as, royalties, quality control, and termination rights. Our Firm can help you work out a licensing agreement, as well. Book a Discovery Call to discuss our contract-drafting service.

10. Can Be Passed Down in a Will

The last added benefit on our list is all about legacy-making. When you register a trademark, you become the owner of that mark. As such, you now have the ability to transfer ownership of the mark to someone else. This means that you can pass down your trademark as part of your estate planning.

If you pass away without a will, your trademark may become part of your estate and be subject to distribution according to state law. This could result in your trademark being sold or transferred to someone who does not have the same vision for your brand as you did.

However, if you include your trademark in your will or trust, you can ensure that it is passed down to someone who shares your vision for your brand. This allows you to maintain control over your brand even after you are gone and ensure that it continues to be associated with the products or services you intended.

To pass down your trademark in a will or trust, you should work with an attorney who can help you draft the necessary documents. You should also make sure to keep your trademark registration up to date and ensure that your chosen successor is aware of their responsibilities as the new owner of your mark.

Final Thoughts

In conclusion, registering a trademark is an essential step to protect your brand and contribute to your overall business success. It can help prevent competitors from using similar marks that could confuse customers, build trust and credibility with your customers, prevent legal issues, increase your brand value, provide nationwide protection for your mark, and help you build a legacy for your future generations.

If you’re considering registering a trademark for your business, it’s important to work with a qualified attorney who can guide you through the process and ensure that your trademark is properly protected. We can help you search for potential conflicts with existing trademarks, file your trademark application, and enforce your rights if necessary.

Don’t overlook the importance of trademark protection for your business success. Take the necessary steps to register your trademark and secure your brand identity! It can make a big difference in the long-term success of your business.

Get started on your trademark journey today!

Thanks to The TTABlog’s latest blog post, I recently learned of the Trademark Trial and Appeal Board’s (TTAB’s) decision to uphold the United States Patent and Trademark Office’s (USPTO’s) refusal to register VETEMENTS as a trademark for various clothing items, including shirts, skirts, and sweaters, and for related retail store services. You’ve probaly heard of this major French fashion brand before!

In re Vetements Group AG, the TTAB upheld that Vetement’s mark(s) were “generic” and “merely descriptive” of their goods and services, and lacking in the “acquired distinctiveness” that would be needed to overcome these issues. We previously defined these terms for you. For the sake of time, you can check out our Glossary and/or read the following posts for more explanation on what they mean.

But for today’s blog post, I thought it would be a good idea to go over the main reason why VETEMENTS was denied registration and what you should take away from this case if you have developed a foreign language trademark. In this blog post, we’ll explain the “doctrine of foreign equivalents” and what it means for your brand.

What Is the Doctrine of Foreign Equivalents?

If you are a visual learner, you may enjoy watching the following video. It covers some of the main points that we’ll be discussed in this post.

The doctrine of foreign equivalents is a legal principle applied in U.S. trademark law that requires courts, the USPTO, and the TTAB to translate foreign words into English to determine whether they are registrable as trademarks, or confusingly similar to existing trademarks.

This doctrine is intended to protect consumers within the United States from confusion or deception caused by the use of same term in different languages. As a general principle, the doctrine is applied in situations in which an American consumer is likely to “stop and translate” foreign words into their English equivalent. And in fact, most modern-day languages are subject to the doctrine of foreign equivalents.

So, (1) if your business name when translated to English is still “generic” or is “merely descriptive” of the goods or services being offered, OR (2) if your name shares the same meaning as an already existing trademark in ANY language, then your mark will very likely NOT eligible for trademark registration.

In the latter scenario, the two marks would be considered too similar to coexist in the marketplace.

And today’s post discusses an example of the former. “Vetements” is a French language term that translates into English as “clothing”, making the mark generic, i.e. descriptive of the product itself. This is a big problem under trademark law.

Why Is the Doctrine of Foreign Equivalents Important?

The doctrine of foreign equivalents is important because it helps to prevent confusion in the marketplace and ensures that each business is given fair opportunity to promote their business.

The doctrine recognizes that consumers may be familiar with foreign languages and as such, may associate foreign terms with their English equivalents. By treating foreign terms as equivalent to their English counterparts, trademark law aims to protect consumers from confusion or deception.

Furthermore, the doctrine of equivalents ensures that unfair competition isn’t being created. As you can imagine, other businesses within the clothing and retail industry need to be able to use the word “clothing” when describing their own products. It would be unfair to allow one company to have a monolopy of a word that everyone would need to reasonably use in their business’ operations and marketing, regardless of it being stated in a different language. 

This means that in practice, when assessing the availability of a trademark, it is important to consider not only the exact words used, but also any foreign equivalents that may be considered too similar. For companies that operate globally or that have multilingual branding strategies, this can be a crucial factor to consider when developing and protecting trademarks.

Conclusion

To wrap things up, the doctrine of foreign equivalents is an important principle in trademark law and understanding this doctrine is critical to developing a comprehensive trademark strategy. 

It is important that you are aware of the implications of this doctrine for your trademark strategy and that you work with an experienced trademark attorney who can help you navigate the complexities of trademark law.

If you have not yet consulted with a trademark attorney regarding your foreign language trademark or any trademark for that matter, you may be missing out on vital analytics and opening yourself up to potential legal challenges, like consumer confusion and litigation.

Need Help?

If you’ve created a generic foreign trademark or your trademark already exists in another language for the exact or similar products and/or services, you may want to pick up our eBook, 10 Mistakes to Avoid for a Smart & Successful Brand Name.

In this eBook, one of the topics we cover is foreign language trademarks, including the exception to the rule, further explanation of the legal implications, as well as, how you should manually conduct a proper search for other potential brand name conflicts. Take advantage of our 50% off limited time offer!

Otherwise, it may be time for a rebrand.

We know that this news is often difficult to hear, but you’re definitely in for a harder road ahead if you continue down this path. You’ll waste more time and money, fighting for a mark that might not truly be worth it. Rebranding, though sometimes costly, will save you in the long run and help you secure the legacy you truly intended.

And if you need help selecting an entirely new business name, we have a service that can help! Check out our Brand Name Consultation, a 60 Minute Legal-Marketing hybrid session designed to create a name that is not only trademarkable, but also marketable within 1 hour. It’s our 1 Hour Trademark.

Conducted via video call, we guide entrepreneurs through the “legal science” of trademark law, introduce strategies that stimulate creative expression, and create a name that NOT ONLY avoids the most common trademark pitfalls, BUT ALSO captivates the attention of your target consumer! We can help you cut down on the brain fog and time that it takes to brainstorm with our proven methodology. Visit this page for more.

Book your solution below!

Right now there’s a lot of buzz and debate surrounding all of the new AI (artificial intelligence) tools and technology like ChatGPT, Jasper, and more of the like. While many are excited at the possibilities of this new technology, others have expressed concern over the potential risks to their career. Just the other day, I came across a tweet stating that lawyers, accountants, and consultants should be worried about their jobs.

Despite my objection to this tweet, personally, I’m a fan of AI!

For simple administrative tasks, like drafting an email, blog/newsletter topics, content ideas, even writing a blog post, ChatGPT has been the little personal assistant a solopreneur like myself needs. And I’m sure other solopreneurs and teams can relate! That quick rough draft saves so much mental energy! Revise, add, reform into your own voice and you’re good to go.

And it’s even provided me with ideas on how I can improve different areas of my practice. Sort of like what you would find in Google search, but just compiled into easy digestible bites. I love that I can ask my questions conversationally and allow this tool to refine/expand on an idea or redirect/substitute an idea for another.

For tasks like these, ChatGPT is perfect. A life savior for the hustling entrepreneur!

However, as impressive as ChatGPT and other AI are, at the end of the day, they’re just tools.

It should go without saying that ChatGPT can not replace the sophisticated thought process, analysis, and human element of a trained attorney. To even think that would be to erroneously believe that the only thing an attorney does is file paperwork, draft legal documents, and spit out facts to legal cases.

And of course, this complexity applies to any professional in a consulting position! But today’s blog post will share some of the reasons why ChatGPT cannot replace the help of an attorney:

Why ChatGPT can’t replace the help of an attorney

1. Lack of Factual Accuracy & Limited Knowledge

Currently, at the bottom of the ChatGPT screen reads the following disclaimer:

“ChatGPT Mar 23 Version. Free Research Preview. ChatGPT may produce inaccurate information about people, places, or facts.”

And the home screen also states ChatGPT limitations, that is, (1) it “may occasionally generate incorrect information”; (2) “may occasionally produce harmful instructions or biased content”; and (3) has “limited knowledge of world and events after 2021”.

And therein lies the major criticism among attorneys. Many attorneys have realized that while playing with this tool, that it has produced inaccurate information, including erroneous facts of cases, erroneous conclusions of cases, and even completely fabricating cases that do not exist. In their FAQs, ChatGPT admits that it will occasionally make up facts or ‘hallucinate’ outputs”. And as it states, it has limited knowledge after 2021 so it is not up to date on recent legal developments and cases either.

Attorneys are required by license to keep up with changes in our field and the profession as a whole, as well as, attend classes called CLEs (Continuing Legal Education) that supplement this education. Learning for us doesn’t end after school is over.

So, relying on ChatGPT for legal facts and advice is just ill-advised.

It would take a legally-trained mind to spot what’s right vs. what’s wrong. Because even when put to the test, ChatGPT has doubled down on the inaccuracies and misinformation rather than correct itself using educated users’ input.

2. Lack of Legal Expertise & Life Experience

While ChatGPT is an intelligent machine, it is by no means a legal expert. It can provide some answers to general legal questions, much like Google can, but it cannot give you legal advice.

Contrary to what many may think, the job of an attorney isn’t just to memorize cases and statutes. We have to apply them creatively and methodologically. And that doesn’t come without years of training and actual practice, i.e. experience.

ChatGPT doesn’t have that. It lacks the ability to analyze complex legal issues, interpret legal documents and regulations, and apply them to specific cases. It doesn’t have the life experience that attorneys, and humans, do. It can mimic our behavior, compile data, but it just can’t think for itself and make decisions.

Moreover, just like any other serious profession, attorneys are wired to think differently from the general public.

There’s been so many times where I can personally recognize the difference between how I would approach a situation prior to being an attorney versus my approach now. It’s interesting and almost shocking, and I’m sure sometimes annoying to the general public (lol). For example, when I get a contract — even the lengthy terms and conditions from Apple — I start itching to read it. It almost hurts to blindly sign without reading them. It goes against everything I and my fellow attorneys was taught in law school.

ChatGPT is unable to apply past experiences and connect with texts in this manner. Sure, it can read the terms and conditions, but is it truly able to understand all of the consequences and real world applications of it? Likely not.

3. No Personalized Guidance

As you can imagine, every legal case is unique, and thus requires an examination of very specific factors in order to provide adequate legal counsel.

ChatGPT provides at most generic responses based on the input it receives. And because clients do not always understand what would be legally relevant or irrelevant to their case, this input can already come at a disadvantaged.

Attorneys work closely with their clients to understand their specific situation, provide tailored legal advice, and represent them in court if necessary.

Attorneys provide a human touch and can empathize with their clients, which ChatGPT cannot do.

Many of the public are already apprehensive of a robot driving their car and self-driving cars, I would imagine they would be even more worried leaving their life and fate in the hands of AI in a high-stakes criminal court proceeding.

Clients want to connect with their attorney. They want to look them in their eye and know that they’re fighting for them as if it was their own person or a loved one’s life on the line. AI is totally incapable of providing that necessary empathy and conveying that confidence to a client.

4. Limited Scope

While ChatGPT can provide answers to general legal questions, it has a limited scope. As mentioned previously, it cannot provide assistance with specific legal issues nor can it represent clients in court.

And that’s likely not change anytime soon! The legal system is VERY slow to change, almost resistant. As society continues to advance, the judicial system is still struggling o catch up.

Turn on the news and you’re bound to hear some strange takes on social media apps, like Facebook and Tiktok, from policy makers and officials. It’s no secret that many of these officials have no clue about these new tools and youth culture. So it’s definitely going to take some time before we see an AI even granted a license to practice to law.

Attorneys, on the other hand, can provide legal representation in a wide range of legal matters, including intellectual property, criminal defense, personal injury, family law, immigration, and many more. As most attorneys do take the traditional route to become a part of this profession, we must undergo 4 years of college, 3 years of law school, a state-specific bar (“the baby bar”), the elusive, bar exam, and a character & fitness test before we are provided with a license to practice. And to keep that license we must continue to seek legal education in the form of CLEs and report that we have done so.

5. Confidentiality and Privacy

Legal matters can be extremely sensitive, and clients need to feel comfortable sharing their personal information and legal issues. As ChatGPT is a machine, clients may rightfully not feel comfortable sharing their confidential information with it.

Attorneys, on the other hand, are bound by strict confidentiality rules and can provide a safe and secure environment for their clients. Attorney-client privilege is one of the hallmarks of our profession. While your friend may not honor and protect your secrets, your attorney must.

Futhermore, the privacy rules of ChatGPT are still developing. As this is a new tool, ChatGPT is collecting and storing inputted data to learn more about us and the world. The creators want to learn how we interact with the tool, any errors they may need to correct, and so much more. This data will be meticulously reviewed. That’s why ChatGPT warns users to not enter any confidential and private information that you wouldn’t want them or a stranger to know.

However, earlier this month, it was reported tht Samsung employees have unfortunately inputed sensitive information on at least 3 separate occasions, including, confidential, proprietary code into ChatGPT for corrections. Now the company is worried about their information is readily available to strangers on the other end. Read more in this article.

Similarly, clients should be concerned about inputting private, sensitive information or even “accidentlally” confessing to anything via ChatGPT. Just as your Internet search history can be subpoenaed, it may be the case that your ChatGPT history can be used against you in the future. Currently, the only way to remove this private information is to delete your account, which may take up to 4 weeks. And though ChatGPT is trained to decline inappropriate requests, I’m sure users may find ways to circumvent this machine and get the information they need. So maybe they can get around ChatGPT’s “training”, but they may not be able to circumvent the law. It’s best to avoid ChatGPT if privacy is a concern.

Predictions & Conclusion

In conclusion, while ChatGPT is truly a fascinating technology that can provide some insight and answers to general legal questions, it can by no means replace the expertise, guidance, and personalized attention of an attorney.

Legal matters are complex and require human interaction, understanding, and empathy. That’s why it is not only essential to seek the help of a qualified attorney for legal advice and representation, but also, I disagree that my career or any other consultant-like career is in jeopardy with the introduction of this technology. People want to trust and consult with people, not robots.

On the other hand, I do believe that AI is going to change the world! I can definitely imagine certain careers being transformed in the near future — especially those jobs that focus heavily on journalism. I imagine that companies will still hire writers, but their jobs may be restructured to work side by side with AI. And depending on how you view it, this could be a good or a bad thing. Maybe a writer will want a rough draft to help them get started, or maybe it’ll take away from the creative process of their job and other jobs. Only time will tell.

Need Help?

Looking for help from an experienced attorney? Whether about business formation, trademark and/or copyright registration, contract drafting and review, or other legal strategy, you’ve come to the right place.

Contact our Firm for help on your business journey! Talk to a human, not an AI.

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!