I’m sure I’m getting old here, but if you ever watched the old Andy Griffith show, Deputy Barney Fife’s frequent advice to Sheriff Andy Taylor, for any challenges or tragedies Andy or Mayberry might face during that particular 30-minute episode . was “Cut it out, nip it in the bud!” Very good advice, especially when it comes to trademarks.
Nipping something in the bud means “stopping something at an early stage.” Stop it before it becomes a serious problem. We can certainly apply this truism to trademarks and, in particular, to the federal registry of trademarks.
There are many advantages and benefits to registering your trademark. The benefit to which I refer in this writing has to do with the notice. When you register your trademark, the federal office publishes your registration for all to see. When a third party, for example, conducts a trademark search on a mark similar to yours, that third party will see their registration and thus have notice of your existing use of the mark. That is important.
Suppose you adopt a particular name for a product in your business. You decide not to apply for trademark registration. Later, Company A independently decides to start using a very similar name with a product similar to its own. Before Company A starts using the mark, it does a trademark search, which comes out clean (since you didn’t register your use of the mark, and therefore your use is unregistered). Company A begins to use the brand in commerce. Company A is a fairly large company with a large advertising budget. So, as you might expect, sooner rather than later your and Company A’s marketing efforts begin to overlap, causing problems.
Due to the advertising dollars that Company A has already spent, they are now unwilling to change their brand/name. Between you and Company A, you may have superior rights to the name, however you will still have to deal with the resulting problems caused by two entities using a similar name in commerce. You will also have to deal directly with Company A, which may very well mean litigation.
On the other hand, if you had initially registered your name with the federal trademark office, Company A would have seen your registration and use from the very beginning, at the time you conducted your trademark search, and more importantly, before he began to use the mark in commerce. . As a result of his registration, Company A would know that the name he had selected was already in use and that he therefore needed to select a different name. With such information at an early stage, Company A could easily go back to its marketing department with instructions to come up with a different name. With registration, you could have avoided all the problems described above, as well as litigation.
Follow Barney’s advice, with his trademark: “Cut it out, nip it in the bud!”