Lesson Learned - Search Trademarks or Land in Court

Columbus Business First tells the story of two small Central Ohio companies who found themselves in the cross-hairs of tech giant Intel Corp.  One company, Intell North Investigations Inc. agreed to settle its lawsuit with Intel and will change its name.

"You can't win. You're not going to beat them," Gary Rountree said. "A small guy like me can't afford it."

The other company, Internet Transaction Solutions Inc. has decided to fight Intel over ITS' marketing slogan "ePayments Inside."

According to Business First:

Smaller companies have limited options when it comes to trademark issues, but by taking advance precautions can avoid becoming the target of a trademark lawsuit. Trademark lawsuit filings are predominantly filed in federal court, and the number of filings has been growing.

There were approximately 2,330 trademark lawsuits filed throughout the United States in federal district courts in 1987, for example. By 2000, the number of filings had almost doubled to 4,053.

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The average combined legal fees paid by two companies involved in a trademark dispute where less than $1 million in damages was at stake last year was $200,000, or $100,000 each, according to the American Intellectual Property Law Association's 2005 economic survey.

If the two companies went to trial, the average combined legal fees would reach $300,000.

The article doesn't mention however the hundreds, perhaps thousands, of cease and desist letters companies receive every day.  Chilling Effects has samples of real cease and desist letters.  It's never fun to receive one of these, let alone pay an attorney to properly respond to the letter for you.

So what's a small business to do?  Perform a trademark search before you adopt your name or trademark.  If you have a few proposed names, we suggest you conduct a screening search for exact or close matches to your proposed names.  The screening search can be used to eliminate names with obvious conflicts.  For the names that survive a screening search, next conduct a full trademark search which will be conducted by an experienced trademark search professional.  The search will look for similar marks that may cause confusion with your mark and will search the US PTO and 50 state databases.  The search will also look for common law marks (marks which may not be registered, but may nonetheless be a problem).

The cost you incur to conduct the search is significantly less than the cost of defending a lawsuit or changing your company's established name or brand.

Tags: trademark, search, litigation, cease and desist, trademark search, business, branding