Starting a New Business?…Using a New Trademark?

• The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
• The right to use the ® symbol in connection with the mark, which may deter potential infringers;
• Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;
• The right to sue for infringement in federal courts;
• The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;
• The ability to recover attorneys’ fees in infringement actions; and
• The ability to have the customs service block the importation of goods bearing an infringing mark.

However, before using a trademark in commerce, it is important to confirm that other individuals and/or companies are not already using the mark. You do not want to spend a great deal of time and money developing and marketing a trademark, slogan or new brand, only to discover that a third party has pre-existing rights to the same, or confusingly similar mark.

A comprehensive trademark search can provide you with a great deal of information regarding third party uses of marks that are similar to your proposed marks. The Comprehensive Trademark Search Report provided by MyCorporation.com contains records obtained from County, State, and Federal databases in addition to databases maintained by third party providers (e.g. WHOIS records contained in the Domain Names portion of your Search Report).

When reviewing a trademark search report, it is important to take into consideration a number of factors ? to determine whether the mark you would like to use is “infringing” on or “likely to be confused” with another trademark. In fact, the Ninth Circuit has developed eight factors (the so-called Sleekcraft factors) that must be considered in analyzing the likelihood of confusion: (1) the similarity of the marks; (2) the relatedness of the two companies’ services; (3) the marketing channels used; (4) the strength of plaintiff?s mark; (5) defendant?s intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by the purchasers. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). The factors are similar in each circuit.

If, for example, two marks are substantially similar, and similar goods and services are offered to the public in connection with the trademarks, then this might give you pause in terms of attempting to register the mark. This is not to say that registration is not possible, it just presents a potential hurdle in the trademark registration process.

It is important to understand that a trademark comprehensive search cannot provide you with a definitive “answer” as to whether or not your proposed trademark is available for use and registration. It does, however, arm you with information regarding potential risks associated with the mark. This information can be extremely beneficial in helping you to make an educated business decision in the use and registration of your particular mark. In fact, if your exact trademark is already in use by another entity, you have received MORE THAN your money?s worth by ordering a comprehensive trademark search report. Now, you are faced with making the decision of whether to proceed forward with your desired trademark or to abandon it and select another mark to search.

MANY businesses HAVE NOT registered their trademarks at the Federal level. Thus, the importance of a Comprehensive Trademark Search cannot be overstated. It is extremely important that you search state and county records to protect yourself from future lawsuits and the future possibility of losing your desired trademark.

Once your mark is registered, it is interesting to note that your mark will then appear when third parties undertake a search for a mark that is similar to your mark. This factor weighs in favor of federal registration, but it also demonstrates how the process of trademark searches, applications, and registrations go “full-circle.” A thorough comprehensive search, like that performed by MyCorporation.com, will provide a wealth of information and will save you time and money in the long run!

• Form a NEW Corporation
• Form a NEW LLC

Although MyCorporation.com is happy to assist you with all of your document filing needs, I strongly urge you to speak with a licensed professional who can provide you with sound advice as to the form of entity that best suits your particular needs.

Good luck in all your business endeavors!