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It Pays to Be Proactive When It Comes to Trademarks

Business advice from New York IP attorneys

Branding has never been more important, which is why missteps in trademarking logos, names and other elements can set a business back significantly. Take the owner of a new magazine who reached out to Kristin Grant, an IP attorney with an eponymous firm in lower Manhattan, to clean up a trademarking mess.

In its application, the company listed its services as “publication of magazines” in a particular trademark class: 41. “However, what they were actually offering is the goods—the magazine itself,” Grant says. “Publication of magazines in class 41 is the service of publishing magazines for third parties and is different from providing the magazine itself.” She resolved the problem but at a cost to the company: “The client unfortunately spent more than if they hired us initially to file the application,” she says. 

Brands have many trademark elements: name, logo, slogan, tagline, and maybe even the color scheme or sound, says Padmaja Chinta at Manhattan-based Chinta & Fratangelo. So where does one start?

“Start with what’s most unique about your product or service,” Chinta suggests. “If it’s the name, trademark that first. If it’s the slogan, protect that. If both the name and the logo are equally important, start with the name so you get broader protection. If you have multiple products, start with your flagship product.”

The ideal time to conduct clearance searches and apply for trademark protection is prior to the launch of a company, Grant adds. “This reduces the risk of having to rebrand after launch if the clearance search reveals that the proposed trademark appears unavailable.” Companies typically start by clearing and protecting the brand name and the logo. “Where there are budget constraints, we see companies start with the brand name only and seek protection for the logo at a later date,” she says.

In the U.S., a company already doing business may have trademark rights without applying for or obtaining registration. Unregistered rights based on existing commercial use are generally limited in geographic scope, however, and enforcement can be tricky. “For example, if you have been selling shirts under the name ‘GreenIvy’ in downtown Manhattan for five years, you may prevent someone else from selling ‘GreenIvy’ shirts on the Upper East side or perhaps Brooklyn, based on common law, but you cannot stop them from selling in Pennsylvania,” Chinta says.

One of the most common mistakes is failing to do basic trademark due diligence before launching a product. “I had a client who ran a thriving small business in the consulting space, under what they assumed was a unique brand name. It was not until 10 years later, after they won numerous awards and acclaim and built goodwill, that they came on the radar screen of a bigger company in their space with a registered trademark for that same unique brand name,” Chinta says. “They were ultimately forced to rebrand to avoid litigation. All that disruption and loss of branding could have been avoided with a simple trademark search prior to using their chosen name.”

Both attorneys say the trademark process appears simpler than it actually is, so it pays to be proactive—not only in terms of due diligence but in choosing the right mark and description for your products. “A weak mark that mostly describes your product is not worth it even if available to use,” Chinta says. “Just like you have a business plan, have a long-term trademark strategy plan. You may just have a couple of trademarks right now. But think ahead. Allow room to expand and leverage.” 

And consider securing social media handles to complement your trademarks, she advises. 

Fees range from $1,000 to $3,000 per application, depending on the attorney. For more information on this area of law, see our trademarks overview.

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