We reported here about a trademark dispute between Starbucks and a London pastry shop owner over the name “Duffin” for a pastry that’s a cross between a doughnut and a muffin. Although the pastry shop owner used the “Duffin” trademark first, Starbucks was first to register the mark.
How can you avoid a similar dispute in the first place?
- First and foremost, always ask an experienced trademark lawyer to conduct a search and provide an opinion before adopting, using and/or applying to register a trademark.
- Second, if the mark is clear, consider filing an application to register the trademark before you start using it. This way, your application will show up on any searches, creating a deterrent effect on others. Registration also provides nationwide rights of priority as against any subsequent user of the mark. It also gives you strong evidence of your exclusive rights in the mark should you need to assert those rights against a third party.
- Third, whether or not you’ve registered the mark, ask your trademark lawyer to watch out for third party use of similar trademarks, as well as applications to register such marks. The U.S. Patent and Trademark Office publishes trademarks before they’re registered. Your trademark lawyer can monitor these publications and alert you in time to oppose registration.
With the help of an experienced trademark lawyer, you can often avoid trademark disputes before they start.
