The following article, written by Scott Lampert of Broad and Cassel's West Palm Beach office, appears in the April 18, 2012 edition of ALM’s Daily Business Review. Please click here to view the article as it was printed in the publication.

Avoid Losing your Brand and Being Sued for Trademark Infringement

A brand can take many forms, including, a name, symbol, design, color combination or slogan. It can be a business name (i.e., McDonald’s), it can identify a product (i.e., Sprite) or it can do both (i.e., Coca-Cola). For the reasons discussed below, it is important to (i) conduct searches to confirm that the brand is not being used by another business or that you are not infringing another party’s trademark and (ii) register trademarks to prevent others from using the brand and damaging your business.

Whether you sell products or provide services, you want to build a brand that consumers recognize and associate with your business when they see your products or think about the services that you provide. When you have achieved “brand awareness”, consumers will look for your brand and are more likely to buy your products or services. Consumers won’t look for a brand that they are not aware of and are less likely to buy products or services under a brand they’ve never heard of.

What if your brand is also being used by another business for similar products or services? Consumers then may buy the other businesses products or services thinking they’re yours or they may avoid buying your products or services if they previously bought the other businesses products or services and had a bad experience. Either of these scenarios will damage your business.

What if the other business using the same brand was using it before you or has a registered trademark for the brand? That business could then force you to stop using the brand and sue you for damages for your infringing use of the brand. You will then be forced to start from scratch to create a new brand, including changing all of your marketing materials, packaging and anything else that references the infringing brand, and possibly paying money to the trademark owner. This scenario could have a significant cost impact to your business and may irreparably damage your business or cause your business to close.

A common mistake made by many businesses is thinking that their name is clear if the state allows them to form a corporation, limited liability company or other entity or register a fictitious name (d/b/a) under a particular name. Businesses often come to realize that this is not the case only after receiving a cease and desist letter. Forming or registering a business under a name simply means that the exact name is not currently being used by another business within that state or, in the case of a fictitious name, that county. It does not mean that someone else does not have a federal or state trademark registration for the same or a similar name or common law trademark rights based on their prior unregistered use of the same or a similar name. It also does not mean that you will be able to stop others from registering or using the same or a similar name.

To avoid these potentially damaging scenarios, you should have a search conducted of (i) federal and state registered trademarks and pending trademark applications and (ii) brands in use that have not been registered or applied for federally or within the states that you are marketing and selling your products or services. These searches will identify whether you have any potential problems using your brand.

After the searches have been completed and you confirm that you can continue to use your brand, you should obtain trademark protection to secure the rights to prevent others from using the brand. Depending upon where you are currently marketing and selling your products or services and where you intend to market and sell your products or services in the future, federal or state trademark applications can be filed.

Taking the proactive steps to search and protect your brand will help you towards your goal of achieving brand awareness and will protect your business from the potential significant cost impact and irreparable damage that may result if another business is using the same brand or an infringement claim is asserted against your business. You should consult with an experienced trademark attorney to discuss your options.

Scott Lampert, Esq. is an attorney in the West Palm Beach office of the statewide law firm Broad and Cassel. He can be reached at SLampert@BroadandCassel.com or by calling (561) 832-3300.