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Cease and desist

Whether your company is a start-up or a well established business, it is important to establish and protect your company name, and in many cases, your brand names as well. Because the Secretary of State's office does not perform a trademark search when approving company names, you could even be doing business using a name which infringes someone else's trademark.

Before investing significant resources in developing or registering your own trademark, it is a good idea to investigate whether there are any confusingly similar marks already in use in the United States which may bar the registration or use of your mark. The amount of research depends on the circumstances. For most "word" marks, the first step is to perform a computer screening search. This search usually costs less than $300. While this step is quick and relatively inexpensive, it is a preliminary search which will only find the exact word mark (and sometimes very close marks) that have been entered into the computer database.

If there are no bars or if the results are ambiguous, the next step for most word marks is to obtain a more comprehensive or 'full' search report from a specialized trademark search company. The report includes a more comprehensive analysis of the computer database, based upon a more sophisticated search strategy to locate marks that may be similar even if spelled differently. The report also includes information from other databases, which include common law references such as trade journals.

For a variety of reasons, such as the time delay in processing of information, no search report can uncover all potential problems. Trademark counsel will review the report and provide an analysis of the level of risk based upon the information disclosed in the report. In some cases, a more extensive search, such as a company name search or an entertainment availability search might be suggested, as circumstances may dictate.

Once the level of risk has been assessed, the initial step is to apply for a one class, actual use application for a word mark or a simple design. The U.S. trademark office charges $335 per class. After the initial filing, the process will take about one year (sometimes longer), depending on whether any problems occur.

If you have not begun using the mark when you file, you can file what is called an 'intent to use' application. Filing based upon intent to use is a good idea because it gives you a constructive use date as of the date of your filing, which can be very important if another company begins using the mark before you do. An intent to use application involves some additional steps, including the filing of a declaration of use and specimens and the payment of an additional fee to the trademark office when you begin using your mark.

A third basis for obtaining a registration is the existence of a foreign registration. In such cases, you will need a certified copy of the foreign registration and an English language translation, the costs of which vary and will be in addition to the costs described above.

Guest Author, Don Thornburgh

This article also appeared in the Jan./Feb.2004 issue of eMinutes, an e-newsletter published by Unger Law.

Don Thornburgh is an intellectual property attorney. (http://donthornburgh.com/welcome.html). 

See also:
U.S. Patent and Trademark Office 

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