Complements of  Finnegan –

Many startups begin their venture with tons of technology expertise and approach potential investors with an arsenal of business plans, trade secrets and patent applications.  One item that’s often overlooked—but can be a costly error—is the company trademark. Here are some tips to help prevent late-game name changes and branding challenges:

1. Consider your company and product names early in the development cycle so you can use them from the beginning and establish a trackrecord.  Trademark rights arise from use of a mark on goods and services in commerce.  Ownership of a federal trademark registration isn’t necessary for protection but a company must actually be using a mark to maintain protectable trademark rights. So, choose a great name and start using it as early as possible!

2. Avoid merely descriptive names.  While naming your service-robot company “servicebot” may be appealing from a marketing perspective, description-based names are not immediately protectable or easily registered.  Made-up names solve this dilemma but may fall into other traps for the unwary—such as having undesirable meanings in foreign markets or being less search-engine friendly.

3. Search trademark registrations and the Internet before use to see if the mark is already in use or registered.  A Google search and TESS search at the USPTO of your mark and close variations is a great first step. Before moving forward with use or registration of the mark, we recommend consulting with an attorney for comprehensive trademark clearance searching. This search will determine whether you will be able to register the mark before you invest in registering and expensive branding.

4. Register your domain name quickly once you have settled on your name.  Before you hit it big with investors and the price for registration skyrockets, its a great idea to secure your domain name by registering it. But registering a “.com,” “.biz,” “.info” or other domain name does not mean a company owns trademark rights in the mark. As mentioned above, trademark rights arise from commercial use. So while a company may own several domain names, if it isn’t using the marks in those domains to offer goods or services they do not have trademark rights.

5. Avoid costly litigation by planning ahead. Launching a marketing strategy or going live with a website without a carefully thought-out trademark strategy can bring unwanted litigation, and use of another trademark—even if unintentional—can bring liability for damages. Proper pre-launch searching and advice from competent trademark counsel will help avoid unnecessary litigation.

Trademarks are a valuable piece to the intellectual property puzzle. When registered, established properly, and used consistently in commerce, your trademark can help your startup make its mark in the marketplace.