The Importance of a Trademark Clearance (And Why You Shouldn’t Use LegalZoom)

We previously discussed why hiring an experienced trademark lawyer makes a difference in getting your trademark published, but hiring an experienced trademark lawyer can also protect you from a claim of trademark infringement.  Use of online bulk legal services, instead of an experienced trademark lawyer, resulted in a claim of trademark infringement for Mr. Freddie Wright.

Mr. Wright hired LegalZoom to handle his trademark registration for his business.  LegalZoom performed a text-based search on the United States Patent and Trademark Office (USPTO) website.  LegalZoom’s text-based trademark clearance did not reveal that Mr. Wright’s proposed trademark, which features a mouth with a tongue, might be confusingly similar to the iconic Rolling Stones trademark of an open mouth with a tongue hanging out.

In reliance on LegalZoom’s advice, Mr. Wright invested considerable time and money to market his business with his trademark.  Shortly after Mr. Wright received notice from the USPTO that his trademark had been published, he was contacted by legal counsel representing the owner of the Rolling Stones trademark with an allegation of trademark infringement.  Mr. Wright was shocked, frustrated, and angry to discover that he would either be faced with a lawsuit or be forced to scrap all of the time and money he had invested into his trademark.  In the end, Mr. Wright decided rebranding his business would be easier and cheaper than fighting the claim.

Mr. Wright could have avoided this whole ordeal by hiring an experienced trademark lawyer.  A trademark search or trademark clearance by an experienced trademark lawyer would have revealed that Mr. Wright’s proposed trademark could expose Mr. Wright to the risk of a claim of trademark infringement under the eight factor test.  Mr. Wright thought using online bulk legal services would save him money, but this decision wound up costing him several thousand dollars and countless hours of wasted time and energy.

Avoid placing yourself in the unfortunate position of Mr. Wright.  The experienced trademark lawyers at Revision Legal can help save you time, money, and a headache by ensuring that your brand is protected while preventing exposure to claims of trademark infringement.

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