Using due diligence, a standard of care, when researching a trademark helps the purchaser of a trademark figure out the value of trademark, whether the trademark is valid, infringed, or infringing on another trademark. All of these are important considerations when purchasing a company or some of its trademark assets
What Types of Things Do I Need to Do when Researching a Trademark?
- Verify ownership – One of the first things that need to be done is to check that the "trademark owner" is actually the owner of the trademark. Title to the trademark should be verified with the appropriate agencies (e.g. the USPTO). Regarding trademark use, a company may have abandoned its ownership rights in a trademark, through nonuse, acceptance of infringement, failing to police its marks, or allowing its mark to become descriptive of its goods. Although usually not a problem a trademark should be verified for use.
- Verify scope of trademark – For a company’s core products one should confirm that the trademark covers the company’s current trademarks, logos, slogans or brands.
- Verify any opposition to the trademark – Most importantly the purchasing party should verify that the company and trademark they are about to buy is not subject to a trademark dispute. No one wants to dispute their rights to a mark right after they purchase the mark. Finally in the interest of future expansion, one will need to check into possibilities of expanding the use of the trademark geographically.
Should I Contact a Lawyer Regarding my Trademark Due Diligence Issues?
A good trademark lawyer will understand that using due diligence when researching trademarks is important, and will help facilitate the process of transferring trademark rights. Since purchasing a company, its assets, and its goodwill can be tricky business, it’s recommended to always contact a lawyer in these complicated situations.