I’m sure I’m getting old here, but if you ever watched that old Andy Griffith show, Deputy Barney Fife’s frequent advice to Sheriff Andy Taylor, for any challenge or tragedy Andy or Mayberry might face during that particular 30 minute episode . was “Nip it, 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. Surely we can apply this truism to trademarks and, in particular, to federal registration of trademarks.
There are many advantages and benefits to registering your trademark. The benefit that I refer to in this writing has to do with the notice. When you register your mark, the federal office posts your registration for all to see. When a third party, for example, searches for a trademark similar to yours, that third party will see your record and therefore have notice of your existing use of the mark. That is important.
Suppose you adopt a particular name for a product in your business. Decides not to apply for trademark registration. Later, Company A independently decides to start using a very similar name with a product similar to theirs. Before Company A starts using the mark, it performs a trademark search, which comes back clean (since you did not register your use of the mark, and therefore your use is not registered). Company A begins to use the brand in commerce. Company A is a fairly large company with a large advertising budget. So, unsurprisingly, sooner rather than later your marketing efforts and Company A’s start to overlap, causing problems.
Because of the advertising dollars 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 issues caused by two entities using a similar name in trade. 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 you to start using the brand in commerce. . As a result of its registration, Company A would know that the name it had selected was already in use and that it 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 find a different name. With registration, you could have avoided all the problems described above, as well as litigation.
Take Barney’s advice, with his trademark: “Nip it, nip it in the bud!”