Imagine this scenario: You’re opening a coffee shop in your local town. You’ve spent countless hours and have invested a lot of money into the opening of your new shop. You’ve chosen a brand name and you’ve had that brand name plastered all over your brand new coffee mugs, your business cards, your napkins, your shop’s signage, and on the domain that you’ve purchased. Your storefront is on a cozy corner of your town square and you’re ready for business.
Months after opening, you come in early to start up the machines for the early birds. You head to check the mail. You’ve received a nasty cease and desist letter from some intellectual property lawyer. The lawyer’s client is a trendy coffee roaster in an entirely different state. You’ve never heard of these hipster coffee roasters, but apparently they use the same name for their business that you are using for you coffee shop.
To make matters worse, the letter tells you that this particular coffee roaster is the owner of a federally registered trademark and this particular trademark has attained “incontestable” status because the coffee roasters have been using the brand name for the past twelve years. The coffee roasters want you to immediately cease your use of their mark and to turn over your profits to them. The letter relates that a lot of consumers have been calling the coffee roasters to congratulate them on finally opening their own storefront where patrons can actually grab a cup of joe made with their famous custom roasted coffee beans. If you keep operating your coffee shop under your current name, the letter relates that you will be sued for damages for trademark infringement. The letter closes by demanding that you pay the coffee roasters’ attorney’s fees for drafting the nasty letter to you.
Not a very pleasant way to start the day. Trademark infringement lawsuits are incredibly costly to defend. Not only do you have a lawsuit to defend, you potentially face high expenditures for rebranding your business.
So what should small town coffee shop have done differently? For starters, the coffee shop should have contacted an experienced trademark attorney to have a clearance search run. A clearance search assesses the availability of your potential mark by searching federal, state, and common law trademarks.
“But I checked Google,” protests small town coffee shop owner. Any IP attorney will tell you this simply is not enough. Although performing internet searches is a step towards proper due diligence when selecting a trademark, it in no way provides comprehensive search results. Hipster coffee roasters may not have an online presence, but that does not change the fact that they hold the rights to a federal trademark.
Another step that small town coffee shop owner should have taken after the clearance search would have been to consult with said IP attorney that ran the clearance search. Trademark is a niche area and you need an attorney with trademark experience to advise you on your potential mark. A number of items need to be evaluated when selecting your potential mark: the availability of the mark, the likelihood of confusion with other trademarks, the geographic area in which you intend to use the mark, where your potential mark falls along the trademark spectrum, etc.
If small town coffee shop had used an experienced trademark attorney before opening her shop, it is exceedingly likely that she would have been advised to choose a different name. Although there is no guarantee against a trademark infringement lawsuit, having an experienced attorney guide you through the process can, at the least, help lower your risk of facing an infringement lawsuit. The cost of obtaining a trademark attorney during the pre-registration process is negligible compared to what it will cost you to retain an attorney to defend a trademark infringement lawsuit.
If you need a trademark clearance search or need a trademark registered, please contact the trademark lawyers at Kennedy Law, PC today.