Trademark Due Diligence: Creating a Brand

Photo by Andrea Piacquadio/Pexels

How much money and time does it take to create a brand? Countless hours and thousands in marketing, website and social media creation, and product development.

How easy is it to lose a brand? One cease-and-desist letter, following by the threat of a trademark infringement lawsuit.

Before you ever get started with creating a business under a name-you-love-and-just-have-to-have, if you want to avoid wasted time, lost money, and the threat of a lawsuit, you should conduct a clearance search of possibly similar trademarks owned by others. Why is this important? If you “take” the trademark of someone else for yourself, you could be forced to lose it (despite the energy, time and money it took to get it).

The purpose of a trademark clearance search is to assess the risk of the likelihood that your intended brand elements (business name, product names, logos) will be associated with another active company. A Rockridge® clearance report also identifies hurdles to registration, and mitigates risks that you might face after trademark application filing.

To conduct a proper clearance search, you can either search for yourself or hire a firm — like Rockridge® — to expertly assist you. Our base clearance search and report takes an average of 6 hours to complete, while our enhanced clearance search can take up to three days.[1]

When conducting a clearance search, it’s important to not only search the United States Patent and Trademark Office’s (USPTO) public database, but include a search of state registered trademarks and unregistered (common law) marks, such as web domains, social media, and the web. Unregistered marks may not be listed a database, but may still prevent you from having brand security if utilized in your area of commerce first.

There is a certain amount of subjectivity involved with clearance searches, due to the nature of trademark law.Trademark law is the law of confusion, i.e. trademark applications may be refused registration and marks may be accused of infringement if they are similar enough to other marks to cause confusion as to source identification and/or business association between mark holders. Confusingly similar marks are not just marks that are just phonetically similar, but those that have one-letter or one-word differences, rhyming syllables, synonyms, etc. to other marks. The team at Rockridge® has expansive experience in working with trademarks and knows just where to draw the line.

If you would like to learn more about the benefits of a registered trademark, check out this article: Benefits of a Registered Trademark.

[1] We utilize a third-party search agency to report exact and partially-exact matches of your conceptualized trademark to common law (unregistered) company and app trademarks, and registered trademarks within the PTO and other international databases.

About Lauren Hughes

Lauren Hughes is the privacy and branding lead at Rockridge Venture Law®. Equally adept at creative campaigns as well as technology transactions, Lauren leads clients through copyright, privacy, regulatory, and trademark considerations in optimizing successful e-commerce portfolios. She is a leading voice among women practicing in technology and tech law. Her primary practice areas include copyright and trademark law, data privacy, sports and entertainment law, and technology transactions. Lauren also leads the Knoxville Technology Council’s Women in Tech Committee, and is a Director of the Tennessee Women’s Theater Project. Read more about Lauren, connect with her, and Calendly her.

RVL® Articles by Lauren

What are the Benefits of a Registered Trademark?

5 Steps to Protecting Buyers’ Privacy and Data

The California Consumer Privacy Act Doesn’t Apply to Me, Does It?

Certification Marks / Trustmarks in E-Commerce

GDPR for Small Businesses

3 Steps to Creating a Culture of Privacy Protection

Key Elements of an Effective Data Privacy Compliance Program

About RVL®

Rockridge Venture Law®, or RVL®, was launched in 2017 to become the preeminent intellectual property and technology firm across the Appalachian Innovation Corridor. We have offices in Chattanooga, Durham, and Nashville, and represent clients and interests globally. Our services include all aspects of intellectual property, litigation, M&A, privacy, technology transactions, and ventures.

In 2018 and 2019, we were recognized as B Corp Best for the World for our commitment to triple bottom line business practices. RVL® is also certified by 1% for the Planet for its nonprofit partnerships advancing stewardship and sustainability. RVL’s nonprofit partners in 2020 include Green|Spaces, Living Lands and Waters, Mustard Seed Ranch, and the NC State Lulu Games Social and Environmental Impact Competition.

Our pioneering environmental and social impact programs attract top-notch legal talent and assure our clients of missional Rockridge Venture Law alignment with their corporate values. Rockridge uniquely addresses two modern profit drivers: innovation (uptake and development), and corporate social responsibility. We’re Building Today’s Company for Tomorrow’s Economy® by leading clients through the dizzying array of information controls, by helping them to develop and monetize proprietary assets, and by enabling their impactful products, programs, and principles.

Learn about global impact and innovation leaders at Rockridge I-Suite®.

See case studies on how we’ve helped transformative companies at Rockridge Portfolio.

Please note that this guide is for informational and advertisement purposes only. The use of this guide does not constitute an attorney client relationship. As laws frequently change and may be interpreted differently, RVL® does not in any way guarantee the accuracy or applicability of this information.

We’re an intellectual property law firm + certified B Corp focusing on innovation + corporate social responsibility.

Get the Medium app

A button that says 'Download on the App Store', and if clicked it will lead you to the iOS App store
A button that says 'Get it on, Google Play', and if clicked it will lead you to the Google Play store