Thursday, September 19, 2013

I want to protect my brand – now what? By Barney Madsen

Adrián Ochoa asked himself the same question, and then called me.  Adrián is the CEO of Avantar Local, LLC (, a Utah Valley company specializing in Yellow and White Pages mobile apps, and a Showtimes movie app. 
I told Adrián, “If you want to protect your brand, you need to know if someone else has already used or registered it.  If you don’t, you may end up putting money into marketing a brand you will later have to change, or end up in an expensive trademark infringement lawsuit and have to pay damages to the registrant.” 
So the first step in the process was to do a comprehensive trademark search to ensure his company could register the marks they wanted to use.  Our search included the U.S. Patent and Trademark Office database, the business name and trademark registries in all 50 states, Internet domain names, a directory of millions of U.S. business names, and trademark registries in other countries that Avantar identified where it wanted to do business. 
Through our research, we found that one of the trademarks Avantar wanted to use was already registered in several other countries.  Knowing that, Avantar changed its plans for its foreign brand, avoided a potential lawsuit, and was able to take the next steps to apply and obtain exclusive U.S. registration of their desired trademark. 
What were the next steps?
    1. Use the mark (or plan to use it) "in commerce", meaning in connection with the sale of goods or services in more than one state.
    2. Provide the dates the mark was first used and first used "in commerce."
    3. Identify the International Class (or Classes) under which to file the mark.
    4. Prepare a description of the goods or services offered in connection with the mark.
    5. Decide whether to apply for a words-only or a words-and-design (logo) mark, or both.
    6. Provide a copy of any logo, and a specimen to show the word mark or logo in use (for example, on a label or packaging, or, for an Internet-based business, a website screenshot); and
    7. Pay a filing fee.
            So, before you decide a “do-it-yourself” approach to protecting your brand – and risk an expensive lawsuit – do what Adrián did and consider having a trademark professional conduct a comprehensive search and then help you prepare and file your application.  

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