Choosing a Trademark

Choosing a trademark can be complicated.  Unlike patents, preferential treatment normally goes to the first to use the trademark in commerce, not the one who has the idea first.  Additionally, maintaining confidentiality and securing a domain name before releasing any information to a third party is absolutely crucial.  This video game was compelled to go through a name change because the company released the name too early.

Beware, Internet searches on available domain names are sometimes captured by web sites and they can register the domain before you and then, in turn, charge a high fee to release it.  “Network Solutions” was sued over this.  In addition, there are other ways information can be inadvertently released.  For instance, when new movies apply for a rating the applications are scanned for domain registration ideas.

Use in commerce” can also be complicated.  For instance, just naming a business does not automatically convey trademark rights.  There are numerous statutory requirements and they are often complicated and are often dependent on the specific facts of each case.  If your application is rejected, the USPTO will not refund your filing fees.

Choosing a Trademark. Be creative and unique.  Remember, a trademark is a word, symbol, phrase or design (or a combination of them) that is unique to a company’s good or service.  Importantly, the trademark has to be distinguishable from other trademarks and cannot be misleading or contrary to community morals or decency.  The trademark cannot also be overly broad or generic.

Research your Trademark.  A good trademark search of similar goods or services will avoid costly development, marketing, advertising expenses and potential legal fees if it is later determined that you infringed on another company’s trademark.  There are countless companies and law firms that offer trademark searches.  However, if you choose to do it alone you must search not only the Federal database, but should also search the common law and trademark databases of all 50 States.  A comprehensive search can be time consuming and tedious, but it is well worth it.  Use the Trademark Electronic Search System (TESS) to search through the Federal database.