AVAILABILITY SEARCHES FOR EXISTING TRADE MARK CONFLICTS

 

Prior to making your final selection of a new trademark, you must determine if anyone else is using the same, or a confusingly similar, trademark on either the same type or product or a related product.  The usual way this is done is to consult a trade mark specialist who will obtain and evaluate what is called an availability search.

 

It bears repeating that this step is a must.  A search of the mark should be done for both your financial and legal protection.  Your initial investment in labels, packaging or advertising that use a new mark can be sizable.  If you proceed to this stage before finding out whether the mark is available you risk losing your entire investment.  You can be forced to destroy material.  Furthermore you can find yourself involved in a trademark infringement case and face court costs and other financial damages.  Take the time to protect your investment and your future and obtain a search.

 

PRE-TESTING OF PROPOSED TRADE MARKS

 

Many companies are reluctant to adopt a new trademark without some form of market research to determine consumer reaction to, and acceptance of, the proposed trademark.  Advertising agencies frequently perform this service for their clients, along with pre-testing of advertising and packaging.  There are also independent market research organizations which specialise in consumer surveys of all kinds.  While many trademark owners may regard these surveys as unnecessary, others like the assurance of consumer reaction before they commit themselves to a sizeable investment in a nationwide advertising program.

 

APPLY FOR REGISTRATION OF YOUR TRADE MARK PROMPTLY

 

Once you have selected and legally cleared your new brand, you should promptly register it as a trade mark and thereafter affix it to the goods or their containers, or to tags or labels affixed to them.  You may even place it on a display associated with the goods, such as point-of-purchase display. The requirements of affixing the trade mark to the product does not arise with a service mark, which may be used in advertising the services.

 

Once the trademark is affixed to the products, you should arrange for an early sale of a reasonable quantity.  The number of the products need not be great, since limited trademark use reinforces ownership rights..  However, limited volume sales must be followed by sales in commercial volume within a reasonable time.

 

The earliest sales should be made on an arm’s length basis to an independent purchaser, not to another division or subsidiary of your company.  The sales should be treated as regular commercial transactions, invoiced and paid for the same as many others.  To be eligible for federal registration, the trademark must be used in interstate commerce, and sales and shipments of the products to out-of-state purchasers will suffice.  Be sure to document the earliest sale and to retain copies of invoices in a permanent trademark file, together with copies of the cheques given in payment.

 

It is not easy to select a successful trademark – one that is not only legally sound, but the most appropriate you can device to create maximum sales of your particular product.  It takes time, patience, ingenuity, and oftentimes a lot of hard work.  The temptation is great to turn in desperation to a dark horse thought up on the spur of the moment.  The answer to that is Don’t!!  There is no substitute for careful, thoughtful, and intelligent selection.  Remember, once you adopt your new trade mark, promptly register it and thereafter begin to use and advertise it.  Your new products may stand or fall as a result, and if you succeed with your new trademark you are very likely to succeed with your new product as well.

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