By: Trademark Attorney Melissa Ramnauth | Fort Lauderdale
When should you get a trademark?
You should apply for federal registration of a trademark before you start using your company name, logo, or design. And if you did not, then you should do it right away.
Trademarks are names, designs, logos, or anything that identifies a business as the source of a good or service. Trademarks can even be sounds or smells. For example, the PlayDoh smell and the "You've got mail" chime are trademarks.
You should apply for federal registration of a trademark at the beginning of a business (ideally before you start using the mark) to reduce the risk of lawsuits.
The trademark process is two steps. First is the trademark clearance search. Second is the federal application.
The trademark clearance search is conducted to uncover whether there are any similar trademarks out there. If there are similar trademarks, then a business owner should consider changing or altering the mark. Otherwise, the owner runs the risk of being sued for infringement. It is also important to remember that your trademark does not have to be the exact same as another mark in order to be sued for infringement. Someone can sue you if he or she believes that your mark is too similar to his or her mark.
Moreover, a google search is not enough to see if there are similar marks out there. You should have an experienced trademark attorney conduct a search of all federal trademark registrations, federal trademark applications, state business listings, and common law searches.
After you have completed the trademark clearance search, you should file a federal trademark application. This step also helps to reduce the risk of lawsuits because it could deter others from copying your trademark. The United States Patent and Trademark Office easily displays trademark applications. Therefore, if you file your application, your mark will likely come up in a trademark clearance search for someone else. A potential infringer might consider changing their mark because the potential infringer would not want to be sued by you.
Altogether, filing a trademark application is a vital step that all businesses should take before the business begins using a trademark, or right away if not already completed.
What was Jessica Simpson's brand name lawsuit about?
Jessica Simpson launched her Jessica Simpson Collection in 2005. The major clothing line, owned by Camuto Group, was sold to Sequential Brand Group, Inc. in 2015 for $117 million. Sequential then filed for bankruptcy.
One of the reasons Sequential floundered was the lack of website. They claimed that they did not have the resources to create the website. Jessica Simpson and her mom then created the website and saw major success. After that, Jessica Simpson sought to buy back a majority interest in the company.
In November of 2021, Simpson bid $65 million on the bankrupt company and won. She is now thrilled to be the majority owner.
Since she is now the majority owner, she has all the rights to her brand names including the Jessica Simpson brand name. If she was not the owner, she would not be able to create products without approval or license from the owner of the name.
Registered trademarks can be valuable assets for companies, as was the case with the Jessica Simpson collection.
This shows that it is important for businesses to register all of the businesses's trademarks. It also shows that consulting with an attorney is vital in understanding all potential options.
If you’re just starting your business, or have been running your business for some time, we would be glad to assist you with trademarks.
Melissa D. Goolsarran Ramnauth, Esq.
International Trademark Law Firm
To read more about Clubhouse's Trademark Issues, read our prior article: https://www.mdgrlaw.com/post/did-clubhouse-a-4-billion-company-forget-to-apply-for-a-trademark