Smart business people continue to make the same mistake: that obtaining a trademark registration is a simple administrative process, akin to going to your local DMV to obtain your car registration sticker. The fact is that trademark law and trademark rights are a nuanced area of law, requiring proper planning and diligence to ensure that your trademark rights are not only protected, but that you will not unwittingly infringe the rights of others.
To lower your risk of getting sued for trademark infringement or being the recipient of an unwanted trademark cease and desist letter, have a competent trademark lawyer take the following steps on your behalf:
1. Conduct a full trademark search: A trademark search begins with a search of the United States Patent and Trademark Office for federally registered trademarks that may be “confusingly similar” to the trademark that you wish to use or register. Note that “confusing similarity” is not the same as “identical.” In fact, many trademarks are deemed to be confusingly similar to preexisting registrations, even if not identical. A search of state trademark office records in each state where you wish to conduct business is also recommended if your business is more local in nature. For instance, if your business is in Connecticut, then you should conduct a Connecticut trademark search.
2. Conduct a Commercial Search: Since trademark rights vest upon use of a mark in commerce, even unregistered trademarks can be protected and be invoked against a third-party for alleged trademark infringement. Therefore you should have a search done of commercial trade databases, the internet, and other publicly available listings for trademarks that may be deemed confusingly similar for the same or similar goods or services for which you wish to use your trademark.
Once the above searches are conducted, your attorney should prepare a brief opinion letter to you if he or she believes that you have the right to use and/or register your desired trademark in commerce. By following the above recommendations, you will be able to better guard against infringing the rights of other trademark owners.