By Cynthia Washicko
When it comes to trademark infringement issues, prevention is most often the best shield.
“The best thing [a company] can do would be to do a trademark search before adopting a trademark,” said Joseph Mohr, an intellectual property attorney with Mohr IP Law in Portland.
By conducting a trademark search before deciding on a name, the owner of the business will know in advance if someone already has the rights to that mark, he said, and avoid the threat of a trademark infringement suit altogether.
Business owners can protect themselves further by registering their own trademark, Mohr said. “(By) having a federal trademark registration, the party has a defense against anyone else saying that its trademark infringes on someone else’s,” he said.
In the event that a trademark suit is filed, the defendant has the option to challenge the trademark, deny that the plaintiff proved the defendant committed infringement, or negotiate a settlement, according to the U.S. Patent and Trademark Office (USPTO).
In trademark infringement cases, courts will consider factors like how similar the two marks are and whether the businesses’ goods or services are similar enough that customers are likely to confuse the two, according to the USPTO.
The USPTO maintains the Trademark Electronic Search System (TESS), a searchable online database of registered trademarks. TESS allows users to search for registered marks based on words and design used in the mark, and can be found at tmsearch.uspto.gov.
More information on how to register a trademark is available on the USPTO website, uspto.gov.