One of the biggest questions I get from businesses is why they should invest in getting a trademark registration. A recent donut debate shows the importance of protecting your brand. The Holy Donut in Maine received its federal trademark registration in 2016 (Registration number 5057631). While it is located exclusively in Maine right now, the company has enforced its trademark against businesses across the country. One way it has done so is to enter into a coexistence agreement if the infringing company is not located in New England. Doing so allows the other company to still use the name but with certain conditions imposed upon that use.
The company’s CEO, Jeff Buckwalter, contacted The Holey Donut in Klamath Falls, Oregon, asking it to enter into a coexistence agreement. Enforcing a trademark, even if an infringing company is thousands of miles away, is important to maintain the strength of the registered trademark. When the Oregon company did not reply to this request, Buckwalter’s company filed a trademark infringement lawsuit. Doing so forced the infringing company to rebrand after it consulted with a trademark attorney. While the Oregon company could have attempted to defend itself in the lawsuit, realistically, it was probably cheaper and smarter to simply rebrand.
When you start your business, perform a comprehensive search to make sure your business name is not going to infringe upon a registered trademark. Doing so can save you a lot of money and grief later. As soon as you know the name is clear of trademark infringement, you should immediately file your own trademark application. If you are using a name trademarked by another company, you may be able to enter into a coexistence or consent agreement and still use the name you want. Your best bet is to consult with a trademark attorney to perform the search and registration and to see what options work in your specific situation if someone else has already trademarked the name.
Contact me today, and we can discuss the trademark process.
This blog post is for educational purposes only. It does not create an attorney-client relationship. Seek an attorney’s advice for your specific situation.