Trademark Strategies for Smaller Businesses

When small companies and brands begin to open their doors, they often overlook the importance of trademark registration and enforcement due to either unawareness or an unwillingness to budget for intellectual property protection. However, having trademark strategies at the forefront can help save a business money and help prevent potential conflicts in the future.

Basic Trademark Strategies

While most small companies may not have patents to worry about protecting, almost all companies should look into trademarking, at the very least, their company name or brand. As the Internet has increasingly allowed for retailers of all sizes to sell goods online, this has resulted in an increase in intellectual property litigation as retailers are no longer confined to their brick-and-mortar spheres of influence.  As such, it is not uncommon for burgeoning retailers online to receive cease-and-desist letters from much bigger companies that share similar names and have more financial resources.

Therefore, before settling on a company name or brand names, a new business should consider looking into clearing the names for use. This can be done through a company name search as well as trademark search. Such diligence at the front end can help prevent conflict with another existing company and prevent the expense of having to rebrand later should a conflict arise.

Trademark Strategies to Avoid Litigation

Once litigation becomes a real threat, companies should consider engaging experienced intellectual property counsel to help properly navigate the legal system as well as to access a number of strategies that small business owners have at their disposal, but may not be aware of, without the guidance of experienced attorneys.  What follows are three core trademark strategies that every small business owner should consider regarding trademark protection.

First: Before any goods or services are ever sold, the brand owner or company should consider engaging counsel to conduct a trademark clearance search.  Experienced trademark counsel use trademark clearance searches to determine whether there is the potential for costly trademark litigation by determining if there are other retailers that share similar names or brands while operating in competing channels or markets.

Second: If a cease-and-desist is received, business owners should be aware of the best strategies to employ to reach advantageous settlements.  For example, a business may be willing to make concessions on certain goods that aren’t integral to their business. Often, agreeing to stop creating new product, but negotiating a timeline for sale of current inventory can greatly help a small business while satisfying the opponent company that the alleged infringement will cease. There are many ways to negotiate a conflict out of and away from formal litigation and experienced trademark attorneys can provide advice best suited to the situation at hand.

Third: Small businesses should seek trademark registration protection of their best brands and products. Once registration is obtained, the legal presumption of ownership and exclusive rights is created. It becomes less likely a third party will seek to stop use of the mark. Additionally, registration will help the owner prevent third-party use of confusingly similar marks.

If small businesses take a little time at the beginning of starting their business to consider these trademark strategies, they will most likely be ahead of the game and in good position to avoid costly trademark conflict in the future.

LinkedIn_Graphics_2018_Final_Legal Insights.png

Trademarks

Sign up for Legal Insights blog here.  See all our content here.  

About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

The firm publishes Intellectual Property Trends (latest developments in IP law), Conversations with Innovators (interviews with thought leaders), Leaders in Law (insights from law leaders), Culture Counts (thoughts on law firm culture and business), and Legal Insights (in-depth analysis of IP, litigation, and transactional law).