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Choosing a trademark for your website without getting sued

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The Wall Street Journal recently ran an article entitled “Name Choices Spark Lawsuits.”  They might as well have run an article entitled “Sun rises in East” or “BREAKING: Wine made from Grapes.”

In other words, this is hardly news.  Companies have had problems with trademark infringement for centuries, and the Internet and social media have only increased the chance for a conflict over names.   As with other kinds of intellectual property disputes, companies big and small can easily find themselves as either plaintiffs or defendants in these suits.  But with some planning, and a little care, the pain of trademark infringement can be minimized, or at least somewhat controlled.  Today, we’re going to talk a bit about the defensive side of the equation: how do you avoid becoming a defendant in this type of suit.  Tomorrow, we’ll talk about what to do if someone else is ripping you off.

When entrepreneurs start out, or established businesses launch a product, they often inadequately clear their new trademarks.   They don’t want to spend the money on a lawyer are in a hurry, and don’t want to take the time to figure out real availability.  Or they just do a search on Google, or look to see if the domain name is available.  They are, in short, asking for trouble — while you should certainly do those things too, they do not substitute for a real trademark search reviewed by a trademark practitioner.   The old aphorism about “an ounce of prevention beats a pound of cure” may as well have been about trademark clearance.  Would you rather spend a few thousand dollars at the beginning of the process, or hundreds of thousands (or millions) of dollars later?

This is not, by the way,  a problem limited to entrepreneurs.  I have personally been involved in trademark infringement disputes where large companies find themselves sued by smaller ones, and end up having to pay out significant amounts of money to repair the damage.  But for small companies, these problems can be even worse — at least the big companies can afford to hire lawyers to fight their battles.  Small companies, conversely, often find themselves over a barrel, threatened with financial apocalypse if they don’t accede to the demands of a more senior trademark owner.  

This is why, when starting out, you need to think about what you’re doing.  Searching for the availability of a mark before you use it is annoying, but a relatively inexpensive insurance policy.  Does it eliminate all risk? Of course not:  no trademark clearance process is perfect.  But will it dramatically improve your chance of avoiding messy problems later, the kind of problems where you have to change your branding and then pay a lawyer and then perhaps pay damages or a settlement to a competitor?