Trademark Due Diligence Lawyers

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 What Is a Trademark?

A trademark is any word, phrase, logo, or symbol that is used to distinguish one product from another, as well as its producer or seller.

Typically, a trademark is used to set one product and its producer apart from another.

Conduct a trademark search before registering your mark to determine if another company or entity is already using the same name. You don’t want to choose a name for your company, run advertisements, produce brochures and other materials, and then be compelled to change the name.

Typical Trademark Types

There are numerous varieties of trademarks, including:

  • Service Mark: A service mark advertises a certain sort of service rather than a commodity.
  • Trade Dress: A product may be distinguished by its distinctive packaging or trade dress.

A collective mark is a symbol, term, or phrase used to identify a group, organization, or association and the people, goods, or services the group offers.

A certification mark is a name or symbol that ensures the caliber of a service or product provided by another party.

What Is a Search for a Trademark?

You should carry out a trademark search to see if a similar trademark already exists before deciding to use a specific trademark or name. You risk being charged with damages and the registered owner’s legal costs if you use a trademark that is identical to or confusingly similar to another person’s registered brand.

Even if you were unaware of the registered trademark, a court would typically assume that the owner of an unregistered trademark was aware of it.

Before applying to the United States Patent and Trademark Office (USPTO), a trademark name or brand should be thoroughly checked to see if another party has previously used it. The name may have to be changed if an appropriate trademark search is not conducted.

The following approaches can be used to do a trademark search:

  • Use the US Patent and Trademark Office’s website to do your own search for trademarks.
  • Conduct an online search to find out if the trademark name is being used by someone else.
  • Use a paid trademark search service like Thomson’s SAEGIS that searches trademark databases for related trademarks.

In addition to the federally registered trademarks listed on the USPTO website, search your state’s trademark database.

Consult a lawyer to assist you in searching for available and unavailable trademarks.

Setting Up a Trademark

A trademark or service mark should be registered with the US Patent and Trademark Office because, after a trademark is registered, the owner will be protected from others who want to copy or duplicate the trademark and because the official registration notifies the rest of the nation that the particular trademark has already been discovered and registered.

The creator of the trademark must plan to use the trademark on goods or services that are used nationwide and have an impact on trade and commerce to register the trademark with the US Patent and Trademark Office.

If the trademark is identical to or similar to an existing brand or goods or services related to it, it cannot be registered with the USPTO.

There is a trademark on the restricted or reserved list.

Trademark is ineligible for protection since it is overly descriptive.

The trademark will be registered for ten years upon approval from the Patent and Trademark Office. The owner must then submit paperwork certifying that the trademark is still in use six years into the ten-year period. If not, the registration can expire.

Dilution or Trademark Infringement

A trademark has rights under federal law if it is used without authorization. The trademark is guarded against:

Trademark dilution happens when a well-known trademark is used for a different service but does so in a way that either damages the reputation of the trademark or diminishes consumer associations between the trademark and the services.

Why Do I Need to Exercise “Due Diligence When Purchasing a Trademark or Trademark Right?

The purchaser of a trademark can determine the worth of the trademark and if the trademark is valid, infringed, or infringing on another trademark by conducting due diligence, which is a standard of care. These are all crucial factors to consider when buying a business or any of its trademark assets.

What Sorts of Things Must I Do When Trademark Researching?

  • Check the ownership: Verifying that the “trademark owner” genuinely is the trademark’s owner should be one of the first things done. Check the trademark’s ownership with the relevant authorities (e.g., the USPTO). Regarding trademark usage, a business may have given up its ownership rights by not using the mark, accepting infringement, neglecting to monitor its marks, or allowing the mark to describe the products it sells. Even though it’s usually not a concern, a trademark’s use should be confirmed. Check the trademark’s scope to ensure it covers the company’s present trademarks, logos, slogans, or branding for its primary items.
  • Verify any trademark opposition: Most crucially, the purchasing party should confirm that the business and trademark they will purchase are not the subjects of a trademark dispute. Nobody wants to challenge their ownership of the mark right after buying a mark. Finally, one must look into options for expanding the trademark’s usage geographically in the interest of future expansion.

Why Is Having a Trademark Attorney Important?

Having a trademark lawyer on your side is crucial for everything involving your trademark. A trademark serves as both the logo for your company and a means of customer product identification. Both your profits and that trademark should be protected.

  • A service mark advertises a specific kind of service and is one of the many various types of trademarks.
  • A trade dress is distinguished by distinctive packaging;
  • A collective mark is a logo, slogan, or phrase used to distinguish a group from others and from their goods, services, or associates; and
  • A certification mark is a symbol or moniker that ensures the caliber of a different party’s service or product.

Having a trademark lawyer assist you with your trademark search is very crucial. Before selecting your trademark name, you and your attorney should search to ensure there aren’t any comparable trademarks. You can be required to pay damages and the registered owner’s legal costs if you use a trademark that is identical to or confusingly similar to their registered brand. In general, even if a trademark owner is not registered, a court will assume they were aware of the registered brand.

Before applying for the USPTO, a trademark search should be done to see if the desired mark is already in use. If you don’t, you can end up having to modify your trademark, which might be disastrous for your company.

What Other Concerns Should I Have with Trademark Law?

Your lawyer can help you register your trademark with the USPTO once you have conducted a trademark search and selected your trademark name or logo. Once your trademark has been registered, you will be shielded from imitation. Additionally, registration notifies the rest of the nation that your trademark has already been identified and registered.

You must intend to use the trademark on goods or services used nationwide and have an impact on trade and commerce to register your trademark with the USPTO.

Should I Speak with an Attorney About My Trademark Due Diligence Issues?

The procedure of transferring trademark rights will be facilitated by a competent trademark attorney who will appreciate the significance of conducting thorough due diligence while investigating trademarks. Always consult a lawyer in these complex scenarios since buying a firm, its assets, and its goodwill may be tricky.

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