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Damien: Good afternoon, and welcome to Traverse Legal Radio. Today we are speaking with Enrico Schaefer. We’re talking about trademark infringement risk management. Good afternoon, Enrico. Welcome to the program.
Enrico: Hi, Damien. How you doing today?
Damien: I’m not doing too bad, sir. Let’s say I ask you to register a trademark for me. What would be the first step?
Enrico: The first thing that people need to understand about trademark registration is that you have to start with a trademark availability search. You need to make sure that no one else in your market niche, etc., is already using something similar to your mark or perhaps even exactly your proposed trademark. What people fail to realize is that when you register a trademark with the USPTO, you’re putting your mark into the public stream of information, and if someone else has a trademark that is similar to yours, they could be monitoring the trademark database, and your grandiose thoughts about having this registered trademark could turn into a threat letter program against you by some large company who believes that your proposed mark is infringing on their superior and prior trademark rights. A trademark availability search is our way of going out into the trademark database and into the online world and see who else out there might be using something the same as yours or similar to yours, both in terms of spelling and phonetics.
Damien: If a trademark comes back with problems, what choices do I have to make?
Enrico: If we do our search, and keep in mind, Damien, every possible new word or brand has got challenges. There are very few words out there, even made up words, that don’t have some use either on the internet or in the trademark database. It’s always a degree of risk. What we do in our trademark availability research for clients is provide them with a scale between 1 and 10 of trademark risk. There is always something out there that is potentially problematic. Now it’s a question of risk tolerance and risk management. If it comes back as a risk level 5, typically that’s something that you’re going to move forward with in most circumstances and try and get your trademark registered. If it comes back as a risk of 8 out of 10, that means that there’s some significant prior marks out there, prior trademarks, which present challenges and problems for your mark and potentially could trigger either a threat letter against you or worse, trademark infringement litigation against you if you’re already using the mark on a website or in commerce. Keep in mind that many people use a trademark in commerce well before they seek to get it registered. One of the things that you always have to be aware of in your risk assessment is, if I’ve been branding my product or service using this particular mark for five years and I go to register a trademark, and as a result of my efforts to get a trademark registered, someone sends a threat letter to me, now all of a sudden I can’t use that brand anymore. Essentially I threw myself under the bus. You have to be pretty careful about this, and it all depends on how much financial resources you have to bring to bear. It depends on who the other person is that might be using something similar. Are they in the same market or marketing channel? Are they a competitor? Are they a completely distinct line of goods and services? Are they a big company? Are they a little company? Can you co-exist? How bad to you need the mark? If you’ve already been using the mark to identify your goods and services for a decade, it’s not like you are going to change right now anyway. So in those instances, moving forward with registration, figuring out if anyone’s going to challenge you, and then fighting any challenge if necessary, is a solid business decision. In other instances where you’re simply contemplating a variety of different trademarks and you can go in lots of different directions, you’re not invested in a trademark already, then you’re not going to want to take on a high degree of risk. You’re going to want to find a trademark to identify your goods and services that looks to be open, that there are no prior uses phonetically or otherwise, and that you’re not going to have a whole lot of problems with down the line.
Damien: What would be a tolerable amount of risk if someone else was using a similar mark to the one I want to register?
Enrico: That issue in the trademark world is always fact specific. Let’s say that my client is already heavily invested in a mark. They couldn’t rebrand or it would cost them tens, or hundreds, or millions of dollars to rebrand. They’re going to take on a high degree of risk. In fact, even if they see that there’s a problem out that, that someone else is using a mark and they started using that mark before they did, where it’s unclear, they may decided to go ahead and get registered if they can. Maybe no one’s looking. Maybe no one will oppose the mark. Maybe they’ll get it registered, giving them a number of advantages. Or maybe they’re going to provoke a fight, because at the end of the day, even if they have to buy the other person out of the mark, that’s a superior solution than leaving the issue unresolved and continuing to invest money in your brand. If you’re a small player and you can’t really take the financial hit of a trademark infringement battle, then you’re going to be obviously less inclined to take on much risk in your trademark registration efforts.
Damien: A lot of information. A lot of things to look at. If you’re looking for more information on trademark matters, please check out the continuing series of Traverse Legal Radio shows with Enrico Schaefer. As always, it’s a pleasure to have you on, Enrico.
Enrico: Thanks, Damien. My pleasure.
Damien: And thank you everybody for listening to Traverse Legal Radio. Have a great afternoon.