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If you answer NO to any of the following three questions, your trademark business knowledge is not up to par.

  1. Did you know that if you don’t clear your trademark properly it can become a serious liability?
  2. Did you know that if you choose a descriptive trademark, it may be very weak and difficult to enforce?
  3. And did you also know that if you select a strong trademark and clear it properly it can become a very valuable business asset?

Let’s get into the meat and potatoes of these concepts...

1. Failure to Properly Search and Clear your Trademark Can Lead to Serious Liability:

How can a trademark become a serious liability? If you use a trademark that is likely to cause confusion with another party’s prior registered or prior-established common law trademark, they can sue you for infringement.  At the least, you may need to cease using the trademark and re-brand your goods/services. In a worst-case scenario, you may be required to pay damages in addition to having to cease use of the trademark and go through the re-branding process.  That’s why we call it a serious liability.  While there is no guarantee that doing your due diligence by conducting a comprehensive trademark search would enable you to avoid any trademark infringement liability, it certainly can help you lower your risk of unwittingly engaging in infringement.

The take-away: Always perform appropriate trademark searching and consult with a trademark attorney before using or applying to register ANY new trademark.

2. Choosing a Descriptive Trademark can Lead to Difficulties with Enforcement:

How can choosing a descriptive trademark lead to enforcement issues?  Let’s put the shoe on the other foot so it’s easy to understand.  Suppose your software as a service website for accounting is located at the URL WEDOACCOUNTINGPLUSMORE.com and displays the wording WE DO ALL YOUR ACCOUNTING PLUS MORE! on the top of each page.

Now suppose you get a cease-desist letter from another party who claims to own the ACCOUNTING PLUS trademark for accounting services.  The letter demands you turn over the domain WEDOACCOUNTINGPLUSMORE.com and immediately cease from displaying the heading WE DO ALL YOUR ACCOUNTING PLUS MORE! on your web page.

Suppose you consult with a trademark lawyer about this letter. Your lawyer will probably tell you that it is safe to ignore this cease desist letter because ACCOUNTING is generic in connection with accounting services (the highest level of descriptiveness) and your entire phrase WE DO ALL YOUR ACCOUNTING PLUS MORE does not amount to a trademark use of ACCOUNTING PLUS. It’s a descriptive use of the wording Accounting Plus in a sentence used to market your accounting and ancillary services.  You are using the words “accounting plus” in a descriptive manner, not as a trademark.  Thus, the owner of the very descriptive ACCOUNTING PLUS trademark will not easily be able to prevent you from using this phrase on your website, regardless of whether it causes some internet traffic of those searching for ACCOUNTING PLUS to find your web page.  The owner of the ACCOUNTING PLUS “trademark” has to live with the results of having chosen a very descriptive trademark.

The take-away: Choose strong trademarks (fanciful, arbitrary or suggestive) not descriptive ones, to use as your brands.

3. A Strong, Properly Cleared Trademark Can Become a Valuable Business Asset:

How can choosing a strong trademark and clearing it properly increase the value of your business? Because a trademark is property. It’s intangible intellectual property, but the value of the trademark is included when evaluating the business.  Let’s say your accounting business chooses an arbitrary trademark such as Albatross and you have a comprehensive search conducted. The search does not disclose any troubling references, and you successfully register the Albatross trademark.  Suppose you continue to use the Albatross trademark for your accounting services and your company does well, branching out to several cities and regions within the USA and even offering franchise opportunities to other accountants who would like to take advantage of the good will you have developed in the Albatross brand.

Now suppose you get tired of accounting and want to spend a few years sailing around the world. You decide to sell your accounting business including the intellectual property, which includes, of course, the Albatross registered trademark.  Because (1) it is an inherently strong (arbitrary) trademark for use in connection with accounting services—thus not difficult to enforce, and (2) you have used it for years and your business has expanded, and (3) the trademark is registered with the USPTO, your Albatross registered trademark may add significantly to the value of your business.

The take-away: Let us help you select a strong trademark, clear it properly and apply to register it with the USPTO so that it can develop into a valuable business asset and increase the overall value of your business.

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Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.