A New Era in Legal Journalism and Expertise
Q&A
Selecting the right trademark for your business is a critical decision that can have long-lasting legal implications. Many entrepreneurs overlook crucial aspects of trademark selection, potentially leading to costly legal battles and rebranding efforts down the line. This article, drawing on insights from trademark experts, explores often-neglected considerations that can help businesses secure stronger, more legally defensible trademarks from the outset.
Amira Irfan; Mallory King; Kalim Khan
One frequently overlooked aspect of trademark selection is timing - many businesses fail to secure trademark protection early enough in their development process. I have worked with startups that focused intensely on product development and market growth while postponing trademark registration, only to face customer confusion and costly legal challenges from businesses with similar names. We address this proactively by emphasizing trademark clearance as part of the initial business planning process rather than treating it as a later legal formality. This early approach helps clients avoid the significant disruption of rebranding or defending against infringement claims after they have already built market recognition.
Mallory KingAttorney & Owner, Breathe Brand Protection, PLLCOne often overlooked aspect of trademark selection and clearance is clients selecting overly descriptive trademarks. Many clients are aware of avoiding trademarks similar to preexisting ones, but they often select trademarks that describe the goods or services they provide. This weakens the trademark and sometimes makes it ineligible for registration. Many clients do not initially understand that a trademark is stronger the LESS it describes the goods or services.
Because of this, I always include information regarding descriptive marks in any trademark clearance search and advise clients if they need to rebrand to something more distinctive. I also always advise clients with potentially descriptive trademarks of the possibility of registering on the Supplemental Register instead, which is designated for more descriptive trademarks.
Kalim KhanCo-founder & Senior Partner, Affinity LawThe overlooked issue that kills businesses is assuming trademark availability based on a quick Google search without checking international registrations and common law uses that could block your expansion plans. At AffinityLawyers.ca, I had a client launch an entire marketing campaign for their tech startup using a name that seemed clear in Canada but was already trademarked by a small European company in the same industry. This resulted in expensive rebranding costs and lost momentum when they tried expanding internationally.
I think that the problem most entrepreneurs make is falling in love with a name before doing proper clearance searches and then feeling committed to it even when legal issues emerge during due diligence. What I do proactively is requiring comprehensive trademark searches across multiple jurisdictions before clients invest anything in branding, website development, or marketing materials. This is because spending $2,000 on proper clearance saves tens of thousands in rebranding costs later.
The technique that works is presenting clients with three to five name options that all clear trademark searches rather than letting them pick one name and hoping it works out. Having backup options prevents emotional attachment to problematic trademarks.
My advice is treating trademark selection like buying property where you wouldn't make offers without title searches. This is because your business name becomes a major asset that's expensive to change once you've built brand recognition in the marketplace.
