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Choosing a trademark that won’t buy you a lawsuit

It all comes down to that old business mantra: cost + risk = benefit

In my last blog post for i-Sight, we discussed choosing a trademark for your company’s new product that lets you walk and chew gum at the same time, releasing millions of uncoordinated people from the embarrassment of having to turn down an offer of Orbit (and a sparkling mouth) on the way back to the office after lunch at the Stinking Rose. (Yes, it’s a real restaurant in San Francisco, and everything they serve has lots and lots of garlic in it.)

So anyway, the marketing folks wanted to call it the Walk ‘N Chew because they said it described the product perfectly—it would get their message across immediately. But you read my blog (and my father is very proud of me that I wrote it and you read it, and thanks you very much) and told them about the dangers of using a descriptive term and asked them to come up with a mark that has nothing to do with the product. First they said “You want us to do what? Are you nuts?” And then you had them read my blog (my father thanks you again) and now knowing better, they changed it to YOWZA!!.

Full speed ahead… stop! So now creative services wants to start designing the way YOWZA!! will actually appear on the product and packaging, what the packaging will look like, and of course they want to get the advertising agency on the phone. And the product marketing department wants to put the mark on the product and get it to manufacturing ASAP.

Can they? Yes. Should they? I wouldn’t. (Bet you knew that was coming). Okay you say, rolling your eyes heavenward, now what? Well, the thing is that someone else may already be using a mark that could cause you problems if you use or try to register YOWZA!!.

Do your homework. You can get a pretty good idea of whether you could have any problems once you start using YOWZA!! by having your intellectual property counsel do a trademark search, which is kind of like a Google search on steroids. It goes through all the records of the U.S. and 50 state trademark offices, trade and industry journals, newswires and press releases, websites and other databases, looking for any mark that could even remotely cause you trouble (and a lot of time and money) down the line.

Sometimes the search results show nothing to worry about (at least nothing that showed up in the search; remember the only thing guaranteed in life—and trademark searches—are death and taxes). Sometimes they show prior uses that could pose some risk of objection (maybe they’ll send you a nasty letter, but you have a good chance of getting them to go away). But sometimes they show prior uses that could be significant risks (OK, here you’re taking a real chance if you go ahead). Once you know what’s out there, you can make an educated decision whether to use the mark.

Assess your risk. Doing a trademark search is not a pre-requisite to using or registering your mark. You don’t have to do one. I just think it makes good business sense to find out if you might have some big problems down the road before you start putting all that time and money into production, advertising, and marketing. It’s a lot cheaper to change the mark before all that happens rather than afterward. Or, if you decide to go ahead knowing there’s a real risk out there, at least you know you’ll need to budget enough for legal fees (if you get sued), or if you decide to try to buy that pesky prior mark to get it out of your way.

It all comes down to that old business mantra: cost + risk = benefit.

So should I order that search for you? Yup, that’s what I thought. I’ll have the results for you in a couple of days.

Originally published on

Contributing Author

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Jill Sarnoff Riola

Jill Sarnoff Riola is a shareholder at Carlton Fields Jorden Burt. She specializes in United States and international intellectual property litigation and transactions, with particular...

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