Josh Gerben, Founder, Gerben Law Firm10.22.18
When choosing a skincare product, many consumers make a decision based on one major element—the product’s name. This makes the development, selection and adoption of a brand name critically important for skincare product companies. If you get the name right you may be setting the tone for an entire brand empire; make a mistake and you may be (literally) paying for years to come. Let’s take a closer look at the dos and don’ts when it comes to choosing and protecting your skincare product’s name.
Do work with your attorney to file for federal trademark protection of your product name. Our firm gets calls from clients all the time who have claimed to have conducted “a lot” of research on a name, and, profess that there is “no chance” of a conflict. Unfortunately, there’s a bit more to conducting a trademark search than most business owners realize. Certainly, you can perform do-it-yourself searches on Google or the United States Patent and Trademark Office (USPTO) website to see if the name you have selected for your skincare product brand is already taken by another company. But if you do go that route, be prepared to risk your entire business on that search.
The smarter move is to work with your attorney to search for and apply for federal trademark protection of the skincare brand name you want. Your trademark attorney not only has knowledge of the pitfalls common to the trademark application process—things like similar sounding names that may cause confusion in the market—but an experienced attorney will use a professional grade trademark search software (and years of knowledge) to conduct a trademark search and provide an opinion on your name. Additionally, working with your attorney improves your chances of trademark approval on your first try, meaning that your skincare brand will be investing in the protection of your brand rather spending time and money stuck in the application process.
Don't file only for federal trademark protection of your logo: Your logo is an important part of your skincare product brand, but if budget is an issue, don’t make the mistake of filing for trademark protection of it before filing for trademark protection of your product name. Why? Because when you submit a logo for trademark protection, you receive protection on your product name as it appears within the graphic context of your logo. Moreover, if you change your logo at anytime in the future, all the federal registration rights in the name will be lost. This makes filing for just a name many times the preferred first trademark filing for a company. You can then consider other filings on logos, slogans and items your attorney may suggest.
Do monitor for infringement: Once you own the federal trademark rights to your skincare product name, it is up to you to monitor for evidence of infringement. As the trademark owner, you must ensure that no other brand within your industry is intentionally or inadvertently using the exact or a confusingly similar name to your own. If you don’t, you could actually end up losing a certain degree of rights in the name.
Don’t contact potential infringers without your attorney’s help:If you’ve ever been the victim of trademark infringement, you know how violating it can feel to see another business actively trying to capitalize off of all of your hard work—and you may be tempted to fire off a terse email or pick up the phone and give them a piece of your mind.
Don’t do it! Never contact a potential infringer without first consulting your attorney. The last thing that you ever want to do is to inadvertently open your business up to legal risk. There is always the potential the “infringer” may have rights that pre-date yours and could turn the tables on you. If you see a business with the same or a similar name to yours, get in touch with your attorney and let him/her determine your best next steps. Taking a moment to pause and draw a deep breath may save you months (or even years) of heartbreak and untold sums of money.
Protecting Your Most Important Element
A trademark will help you protect your skincare product’s most important element—its name—if you follow a few important tips. Do work with your attorney to search and file for your trademark application and monitor for infringement, and don’t make the mistake of only filing for protection of your logo, or of getting in touch with potential infringers on your own. By heeding these guidelines, you’ll be able to focus on building your brand and enjoying your success.
About This Expert:
Josh Gerben is the founder of Gerben Law Firm, PLLC, a trademark law firm that has filed over 5,000 and secured over 4,000 federal trademark registrations for clients since 2008. Trademark lawyer Josh Gerben has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.
Do work with your attorney to file for federal trademark protection of your product name. Our firm gets calls from clients all the time who have claimed to have conducted “a lot” of research on a name, and, profess that there is “no chance” of a conflict. Unfortunately, there’s a bit more to conducting a trademark search than most business owners realize. Certainly, you can perform do-it-yourself searches on Google or the United States Patent and Trademark Office (USPTO) website to see if the name you have selected for your skincare product brand is already taken by another company. But if you do go that route, be prepared to risk your entire business on that search.
The smarter move is to work with your attorney to search for and apply for federal trademark protection of the skincare brand name you want. Your trademark attorney not only has knowledge of the pitfalls common to the trademark application process—things like similar sounding names that may cause confusion in the market—but an experienced attorney will use a professional grade trademark search software (and years of knowledge) to conduct a trademark search and provide an opinion on your name. Additionally, working with your attorney improves your chances of trademark approval on your first try, meaning that your skincare brand will be investing in the protection of your brand rather spending time and money stuck in the application process.
Don't file only for federal trademark protection of your logo: Your logo is an important part of your skincare product brand, but if budget is an issue, don’t make the mistake of filing for trademark protection of it before filing for trademark protection of your product name. Why? Because when you submit a logo for trademark protection, you receive protection on your product name as it appears within the graphic context of your logo. Moreover, if you change your logo at anytime in the future, all the federal registration rights in the name will be lost. This makes filing for just a name many times the preferred first trademark filing for a company. You can then consider other filings on logos, slogans and items your attorney may suggest.
Do monitor for infringement: Once you own the federal trademark rights to your skincare product name, it is up to you to monitor for evidence of infringement. As the trademark owner, you must ensure that no other brand within your industry is intentionally or inadvertently using the exact or a confusingly similar name to your own. If you don’t, you could actually end up losing a certain degree of rights in the name.
Don’t contact potential infringers without your attorney’s help:If you’ve ever been the victim of trademark infringement, you know how violating it can feel to see another business actively trying to capitalize off of all of your hard work—and you may be tempted to fire off a terse email or pick up the phone and give them a piece of your mind.
Don’t do it! Never contact a potential infringer without first consulting your attorney. The last thing that you ever want to do is to inadvertently open your business up to legal risk. There is always the potential the “infringer” may have rights that pre-date yours and could turn the tables on you. If you see a business with the same or a similar name to yours, get in touch with your attorney and let him/her determine your best next steps. Taking a moment to pause and draw a deep breath may save you months (or even years) of heartbreak and untold sums of money.
Protecting Your Most Important Element
A trademark will help you protect your skincare product’s most important element—its name—if you follow a few important tips. Do work with your attorney to search and file for your trademark application and monitor for infringement, and don’t make the mistake of only filing for protection of your logo, or of getting in touch with potential infringers on your own. By heeding these guidelines, you’ll be able to focus on building your brand and enjoying your success.
Josh Gerben is the founder of Gerben Law Firm, PLLC, a trademark law firm that has filed over 5,000 and secured over 4,000 federal trademark registrations for clients since 2008. Trademark lawyer Josh Gerben has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.
