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Thinking about doing a trademark search for my small bushiness logo to avoid trademark infringement

Rockville Centre, NY |

What happens if I do not file a trademark application? Can someone else copy my logo and then file a lawsuit against me? Right now I am working with a small budget and my main concern is someone filing a lawsuit against me for trade mark or domain name infringement.

Attorney Answers 6

Posted

In the United States, even without filing for registration, you would have common law rights based on where the mark is first being used, provided that the other party is offering related goods or services.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Welcome to Avvo. Short answers are good, but that's too short. The need for a search needs to be addressed first, especially for someone on a shoestring budget who could not last a second in a conflict situation.

William S Goldman

William S Goldman

Posted

Thanks, Bruce. Long answers are unnecessarily confusing. And from a practical standpoint, since his resources are limited, it's highly doubtful that a search would reveal much in the case of a pure design mark. However, if he's really talking about a stylized word mark, then that's a different story altogether. Perhaps, he needs to provide some further clarification on this point.

Bruce E. Burdick

Bruce E. Burdick

Posted

Agreed, long answer are often confusing. The logo normal logo called a "design" is a stylized word, perhaps with some other design elements. We don't know, so we can only work on generalities and the normal situation. If the logo is a pure design, then we would need to throw copyright protection into the mix.

Posted

Q:"Thinking about doing a trademark search for my small bushiness logo to avoid trademark infringement"
Answer: Great idea, you should do that before settling on a trademark or logo.

Q:"What happens if I do not file a trademark application?."
Answer: You might lose your trademark to someone who does file a trademark application, particularly if you are second to use and they are first..

Q:"Can someone else copy my logo and then file a lawsuit against me?"
Answer: Even if you are unregistered, rights are based on use, so if you use first and they copy you, and sue you for infringement, they will lose if you defend the case. And, they might have risk of infringing you, so that could backfire on them. However, if they are a giant company and your are a small guy ["I am working with a small budget "] they might easily steamroll you into submission. That's why you need the search, to avoid the conflict so you don't get steamrolled and can stay within budget.

If you are evaluating whether to do a search or instead do an application, do the search. Call for a free consultation and you can find how to do a rough search yourself, at least enough to avoid an obvious conflict. However, if you don't even have enough to do a trademark application, you do not really have enough yet to be in business, so you need to be really careful not to infringe anyone else as you will go bust quickly if that happens.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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Asker

Posted

If I start up my company and call it online dating concierge. I looked online there are other companies out there that call themselves online dating concierge? Is this grounds for trademark infringement?

Bruce E. Burdick

Bruce E. Burdick

Posted

No, not by you and not by them. "Dating Concierge" has been held a descriptive term by the US Patent & Trademark Office.

Posted

If your business does not have a potential for market or geographic growth, then you can get away with not registering, but keep in mind that someone else can register your trade name/dress and use it federally and you would be limited to using it only locally. If this is no concern for you, you are a quick study, a detail-oriented person and you have some free time on your hands, buy a nolo book on how to do a trademark search and good luck!

Communications through this website are provided solely for informational and educational purposes and do not constitute legal advice or legal opinions. Transmission of this information is not intended to create, and does not form an attorney-client relationship. You should not act or rely on any information contained in this website without first seeking the advice of an attorney under auspices of confidentiality. For more information visit www.mitevalaw.com

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Bruce E. Burdick

Bruce E. Burdick

Posted

Asker, you should also know that you can register a trademark with your state, usually through the Secretary of State, and often online. In Illinois is only costs $10. In NY where you are it costs $50 plus atty fees http://www.dos.ny.gov/forms/corporations/0241-f-l-a.pdf That is only good in NY, not all 50 states like a US trademark application that costs $275 plus atty fee, The US trademark application is a much better bargain for many reasons. There is no way you should do your own trademark search the first time, even with a Nolo book.

Posted

The first thing you should consider doing is a trademark search. It is always possible you are inadvertently infringing on someone else's trademark. Only once a search reveals your trademark to be unique, can you obtain any trademark rights.

Furthermore, a federal trademark registration is the only way to create a presumption of federal ownership. It is critical to protecting your rights.

I hope this helps.
Josh

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Posted

I would add to the excellent responses of my colleagues that if your business is based in part on use of the internet, then you probably are competing for customers outside of the United States, in which case you need to identify the countries in which you will be operate and expand your trademark search to those countries . Too often small businesses forget that they are probably operating in a global environment.

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Asker

Posted

I am looking to provide a platform for people to teach Yoga online. I am looking to recruit yoga instructors as independent contractors. I think this service would provide a lot of benefits ie convenient and lower cost. However here is the major problem. What happens if someone where to injure them self during a Yoga session? In my terms of use it would clearly say you need to hold me harmless and indemnify my company. Yet I am pretty confident an opposing lawyer would file a lawsuit against me regardless of this language. What are your thoughts? I think I have a great idea but without this being addresses I see zero potential.

Maurice N Ross

Maurice N Ross

Posted

There are ways to address these issues---web-sites such as Avvo that refer lawyers to people develop terms of use that protect them. You can also purchase insurance to protect yourself. But most importantly, you need to sit down with legal counsel and develop a comprehensive business and intellectual property law strategy. This web-site is not a good substitute for retaining a lawyer because as you suggest, the risks of what you are doing are very high.

Posted

Every business has a name or logo. An LLC and a corporation have names that have been approved and registered by, at least, one secretary of state’s office. For many businesses, these names are also the "brand" through which they advertise and market their products and services. But many companies, despite building an entire business based upon a brand identity or logo, have done nothing to protect their brand identities properly or to ensure that the company names, logos and brands they adopt and use do not infringe upon prior existing names, brands, and logos. In any case, a trademark search is important before any name, mark, slogan, logo or other brand identifier is adopted and used.

A "trademark" is any word, name, symbol or device, or any combination thereof which is used by any person (including formal entities) to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of those goods. A "service mark" is used in the same manner as is a trademark except it is used to identify and distinguish the services provided. Sometimes, but not always, a corporate or trade name that is used to identify a business entity is also used as the brand identifier for goods and services provided by that entity. In such a case, the corporate or trade name functions in two capacities: as a trade/corporate name and also as a trademark and/or service mark.

Contrary to popular belief, any word in any language can function as a trademark depending on how it is used. An individual letter or numeral, or groups of letters or numerals, whether they are acronyms or not, can also function as trademarks. It is also a misconception that domain names are protected intellectual property assets. They are not. Domain names do not grant trademark or similar proprietary rights. The owner of a domain name registration is simply the owner of that registration, but cannot claim any proprietary rights deriving from the domain unless it is also used as a trademark. Use of a domain name that contains a trademark owned by a third party can, however, infringe upon or otherwise violate the trademark rights of the third-party owner.

In the U.S., trademark rights derive from actual use of a mark on a product or to advertise a service being provided to the public. Trademark rights in the U.S. are based on priority of use, and the first to adopt and use a mark and/or the first to file a federal application and obtain a registration for a mark is the owner of the rights in a mark. It is not essential in the U.S., unlike in other countries, to obtain a federal registration for a trademark before some level of protectable rights exist.

The U.S. recognizes "unregistered, common law" rights in a mark that has been adopted and used in good faith on a product or to offer a service. However, "common law" rights are limited to the geographic area of actual use and a "natural zone of expansion." In contrast, the owner of a federal registration for a mark owns exclusive, nationwide rights to use of the mark, regardless of the geographic area of actual use, subject to any preexisting and prior common law rights owned by a third party.

It is this recognition of fully valid and enforceable unregistered, common law rights in the U.S. that makes conducting trademark searches absolutely essential before any business adopts a new corporate name, trade name, fictitious business name, trademark, service mark, slogan or any other type of brand identity. Failure to conduct a trademark search renders a business vulnerable to a claim of trademark infringement at any time.

It is strongly recommended that an experienced trademark lawyer commission a "full" trademark search and provide a fully informed opinion on the availability of a mark or name based on the search before a new name or mark is adopted and used.

*** The information you obtain on this page is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation. Nadeem Noah Harfouch invites you to contact him and welcomes your calls, letters and electronic mail. Contacting Nadeem Noah Harfouch does not create an attorney-client relationship. Please do not send any confidential information to Nadeem Noah Harfouch until such time as an attorney-client relationship has been established.***

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Asker

Posted

Very helpful info. Wish I could afford you as my patent lawyer Thank you

Nadeem Noah Harfouch

Nadeem Noah Harfouch

Posted

Perhaps I can help you find an attorney that is in your price range, if I can't personally help you. Please feel free to contact me at any time.

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