Startup and video game law, from a Canadian and U.S. perspective
Importance of a Trademark Search
Our clients spend an immense amount of time building their business, from product development, to names and branding. In this whirlwind of creation, we often encounter businesses that forgot to see if their product or business name is available for trademark. This is a problem that also arises with third party creative agencies, who have a tendency to propose names or logos without clearing their availability for trademark!
With multitudes of company and brand names registered daily, it is critical to undertake a trademark search prior to investing any capital into a name or logo.
A trademark registration can protect a name or logo, for example a company and brand name. Without trademark registration, there is little to no protection against others using your brand, passing off, or imitating the brand that you have worked hard to build. Worse, competitors can even force you to abandon your brand if they register a similar trademark before you, even if you entered the market before them.
Enter the trademark search. Your lawyers will search existing trademark databases to see if there are any direct or similar marks already registered. If the trademark search is clear, the next critical step is to register your trademarks to provide legal protection from both use and misuse by competitors. Where issues arise, your lawyers can advise as to risk with proceeding and other options available.
When approaching a trademark search, a few considerations:
- Logo and Word Marks. Many business have two potential trademarks, one for their name and another for their logo. Each should be searched to ensure availability.
- Geographic Scope. What countries do you plan on selling goods/services in? Trademarks are filed on a per-country basis and an effective search will focus on those markets that you plan on operating/filing trademarks in.
- More Than Direct Hits. It’s critical for the search to look beyond direct hits, i.e. the exact name. Instead, an effective search will also look for similar names or logos, which could involve similar or alternative spellings.
Keep in mind that a corporate name search is NOT a trademark search and a corporate search cannot provide any certainty that a trademark is available.
Before investing time and money in your business names and logos, contact your IP lawyer to undertake a trademark search. It’s much easier to pivot to a new name or logo at the start, rather than right before launch.