How can I reduce the risk of an infringement claim?
Minneapolis trademark attorney Jennifer Debrow explains how to reduce the risk of an infringement claim.
Email: [email protected]
Phone: (612) 632-3357
So when you’re adopting a new mark, the best thing to do to reduce the risk of a third party bringing an infringement claim against your use of the new mark is to do a trademark clearance search. So trademark clearance is a process in trademark law where we look at the U.S. Federal Register, we look for common law sources, and we try and evaluate, “Are there third parties that are using similar marks with similar goods and services, and what would be the risk of an infringement claim?” That trademark clearance process has different levels. I would suggest that whenever you’re considering a new mark, you start with your own Google search and just see, do you see anybody out there using the same or similar mark with same or similar services. Then trademark council could help with the clearance search, where they would – we have an industry standard search report that we can order from a vendor that’s, like, 300 pages of federal records, state records, online resources, web common law domain names, where we try and evaluate, “Is there anybody out there using the same mark?” And again, because in the U.S., trademark rights are based on use, not registration, it’s important to look for common law users, people who may not have registered a mark, but may very well have rights in that mark.
So this trademark clearance process, it can be a couple thousand dollars to do, but if you’re gonna adopt a new mark and spend a lotta money rolling it out or put it on packaging or TV advertising or anything like that, it’s money very well spent.