5 Factors to Consider Before Buying a Trademark

Nick Potts,

So, you have your name.

Everyone is excited about it.

All you need to do now is register, right?

WRONG...

Before filing that application, we recommend taking a moment and reevaluating your name selection against some commonly overlooked criteria.

Unfortunately, jumping too quickly from trademark search to trademark application is common. After all, the typical U.S. timeline from filing to approval is 6 to 8 months. While we can all relate to wanting to get our ideas finalized, overlooking red flags may just cause more time delays in the long run.

In this article, we'll review five factors that are often overlooked when buying trademarks.

Consider the factors below before making your final move and upper-management will thank you. Then again, they might not say anything at all... We usually don't when things go smoothly!

5 Factors to Consider When Buying a Trademark

1. Is this trademark low risk (enough)?

Trademark risk assessment is NOT black and white. Not even the best lawyer in the world can guarantee with absolute certainty that your name selection will remain unopposed.

Like many aspects of our legal system, much is left open to interpretation. Beyond exact matches, trademark infringement claims are based upon the element of confusion:

How likely are Company X's customers to confuse your brand with Company X and vice-versa?

Of course, by the time a case is brought to court, proposed evidence of confusion has already been gathered. But what about when there is no evidence because you haven't even introduced your mark to market?

The best way to proceed is to determine your candidate's risk factor. A risk factor is simply a designated number that is representative of a mark's likelihood to face opposition.

Naturally, your trademark cannot move forward if someone else has already registered it within your desired Nice Class.

But you trademark candidate should also NOT:

  • Be too phonetically similar to any other marks.
  • Be too visually similar to any other marks.
  • Coincide with any legal precedents that would suggest grounds for opposition.
  • Be similar to marks owned by companies known for filing oppositions.

Should the candidate meet all of these requirements, it may be determined low-risk enough to proceed.

2. Does this trademark support our long-term goals?

Is this trademark going to be used to market a product, service, or business? Is it broad enough to accommodate any potential future changes you may make?

For example, say you live in Nashville and own a custom t-shirt company. You have been successfully running your venture under the trademarked name "Nashville Fabrics" for two years. Business is booming, and you want to expand.

Unfortunately, you now feel "boxed in" by your name and want to change it.

In addition to paying for rebranding and advertising, you will now have to go through the trademark search and application process all over again.

Of course, if you are a larger corporation, the cost of conducting another trademark search will pale in comparison to the cost of reintroducing consumers to the new brand. The bottom line: Take your time and choose a product or business name that can grow with you.

3. Have we checked common law databases?

The U.S. government grants trademark rights to individuals and business who can both:

  1. Prove they were the first to use the mark in their region, and
  2. Prove a transactional exchange of commerce has occurred.

Since regional businesses are not required to register their marks, tracking down ones of relevance can be difficult. Instead of an "official" common law database, both legacy providers and legal counsel often rely on a variety of sources to get the job done.

Thomson currently boasts the largest common law source on the market. However, it should be noted that approximately 40 percent of those sources either no longer exist and are old repositories (this is according to our in-house research).

4. Have we checked app store databases?

Mobile apps have taken the world by storm; making up a $269 billion industry. An estimated 60,000 new apps are created each month.

We don't tend to think of apps as intellectual property, but they absolutely are.

Unregistered app names are offered the same protection as any other unregistered trademark. Which means, unregistered apps are protected under common law in the U.S. and about half of the E.U.

If your organization is NOT checking for apps, you are increasing your odds of opposition during the trademark application process. Interestingly, most apps fall under Class 9. However, there are some exceptions.

The most challenging aspect of an app store search is identifying similar usage. Your search within an app store may not generate any direct matches for the candidate "Scorebored." However, there might be several variations of "Scoreboard." Will the app store's algorithm deliver these close matches?

Maybe, maybe not. Your best bet is using an app store database (like the one within NameCheck) that has been specifically formulated for trademark research.

5. Have we checked appropriate global regions?

Planning on expanding internationally someday?

Assuming it's within budget, you should consider conducting an international search now because the benefits of searching early far outweigh the potential setbacks of moving forward with a name that could someday cost you millions.

Different countries have different application rules, processes, and time periods. For example, China is a "first to register" country. Unlike the U.S., China doesn't care that years ago someone paid you in exchange for goods and services under a specific name if you don't register it.

Understandably, many companies forgo checking all potential global regions due to the typically high costs of outsourcing. The good news?

It is now possible to conduct unlimited regional searches for ONE FLAT FEE.

Don't Buy Without NameCheck

With NameCheck, legal teams can evaluate all of the often overlooked and compromised aspects of the trademark search process for a fraction of traditional costs.

NameCheck combines the accuracy of traditional legacy providers with the DIY-nature of traditional online databases into a user-friendly platform. Powered by a unique algorithm, the program evaluates word linguistics, product types, app store usage, and global jurisdictions.

The best part? Ranked assessments are delivered in as little as 15 seconds.

 

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