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Let the Trademark Search Begin— Girls Named TIFFANY Love Jewelry Too!
© Cheryl Hodgson 2008 | Posted on April 9, 2008
Selection of a great trademark requires investigation. In a recent post, I likened investing in the wrong trademark to the foolish act of building a house on land you don’t own. How does this happen? Simple! In a rush of excitement to launch a new product or business, it’s easy to forget that selection of a trademark is not the same as naming a baby.There can be dozens of beautiful young baby girls named Tiffany, happily growing up in different parts of the world, or even the same community happily meeting each other from time to time.
Even when two girls named Tiffany are in the same class in school, last names are sufficient to help tell them apart. While Tiffany is a beautiful name, it’s not available as a trademark for most product lines. Let’s suppose one young Tiffany grows up, and decides to start a jewelry line called TIFFANY. After all, her name is “Tiffany.”She should be able to do so, shouldn’t she?
The answer is “No.” Most people in the western world (except for the few who have lived under a rock), recognize TIFFANY http://www.tiffany.com / as one of the most famous of all trademarks, the store with the light blue box which every girl hopes contains that beautiful diamond ring! TIFFANY was even immortalized in the Audrey Hepburn film, Breakfast at Tiffany’s. TIFFANY illustrates two important points:
1. In the case of a famous mark like TIFFANY, it is obvious the property (the trademark) is already owned by a third party, so anyone would think twice before opening up a new jewelry store using Tiffany. Similarly, who in the world would think of opening a restaurant with Golden Arches? On the other hand, when no well-known brand immediately comes to mind when a term is selection not so simple. There is no “famous” mark which serves to eliminate certain proposed marks from use. How does one know for certain whether the name can be chosen, used, owned, and protected?
2. Just because a common term is be used by a many other people, does not mean it’s free for you to use as your brand. More important, the fact that a term is in common use may be an indication that the term is a bad choice and so weak it will never be a strong and protectible. Hence, an investigation is an essential step in the selection process.
What then is proper investigation? A trademark investigation usually means paying a professional search firm $500 or more for a complete search of existing and pending U.S. trademarks, all 50 state registries, trade directories, and now domain registries. These searches can run hundreds of pages. Expect to pay legal fees for a professional opinion as to whether the name can be used, the cost of which depends upon the results of the search.
Clients sometimes balk at the cost, saying, “But what if I find out I can’t own the name? I’ll have spent the money for nothing.” Would you rather invest the cost of the search and an opinion and learn a mark is unavailable, or a poor choice for other reasons, minimizing the risk of spending a 100 times that amount in legal fees, if not more? So save the search costs, put your head in the sand, and risk getting sued by someone who already owns the name. This doesn’t count the loss of investment, time, and momentum in product launch.
Here are a few words of sage advice.
1. Search within in your industry to narrow the field in an effort to eliminate terms already in use, including terms which are overused and common within a particularly trade or industry. The more uncommon a term within an industry, the greater chance of success you’ll have in selecting correctly the first time.
2. A successful search is a wonderful road map, a guide to navigate the market for your product or service, and to refine and make better your initial selection, presentation, and even assists to formulate a strategy for proper registration.
3. Ignorance is not bliss. Modern court decisions have held that failure to conduct a proper trademark investigation before adopting a mark can be used as evidence of bad faith when sued for infringement! In short, if you fail to search and are later sued, don’t count on claiming you didn’t know about someone else’s use to profess innocence.
Technorati Tags: Branding, Marketing, TIFFANY, trademark, trademark registration, trademark selection
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