The answer depends on the type of business. To begin, legally, you do not NEED a trademark lawyer when opening a new business. But, in general, it would probably be wise to consult a trademark attorney for a standard new business. Aside from trademarking your own logos, company name and phrases, you need to ensure that your new business is not infringing upon the trademarks of others. If there is a conflict with an existing trademark, there are some options such as seeking a use license or creating a different trademark.

Further, as noted, certain types of businesses WILL need a trademark Law Firm like Revision Legal to protect existing intellectual property. Examples of such new businesses include:

• A startup with already established trademarks — such as a new business that recently purchased intellectual property (“IP”) including one or more trademarks
• A tech or other startup that will specialize in manufacturing or providing trademarked goods/services
• A new business that will be using licensed trademarks
• A new business that will be reselling trademarked goods
• A startup that has used assets — including IP assets — as collateral for financing

As a side note, there is often great value in hiring trademark attorneys BEFORE opening a new business, particularly to attract investors. Having registered trademarks — likely, intent-to-use trademark registrations — can make the difference for capital investors with many potential investment choices.

In any event, trademark attorneys are needed for these above-listed types of new businesses for several reasons. First, trademarks must be registered and existing trademarks must be kept valid. All trademarks currently registered must be properly maintained with the US Patent & Trademark Office. That process is not just about filing the renewals, but is also about proper use of existing trademarks in interstate commerce and policing potential infringement. Second, experienced trademark lawyers can also maintain trademark registration at the State level (and internationally, if applicable). Third, retaining a trademark Law Firm also ensures that your new business is accurately and correctly using a trademark and not infringing on the trademarks of others. Finally, it is essential to monitor and police the marketplace to prevent infringement of your company’s trademarks.

As for other types of new businesses, hiring a trademark attorney may not be required for opening your business. But, a newly opened business will need a trademark lawyer very soon after business success. Typically, the time frame is about 12 to 18 months. This is because, as your new business captures market share, your IP increases in value. Trademarks are part of your intellectual property and, like other business assets, trademarks will gain value as your business grows. It is important to provide legal protection for those assets and ensure that competitors cannot “steal” your trademarks. It is very costly to litigate with competitors over who has ownership over trademarks. It is much less risky and expensive to hire experienced trademark attorneys to register your trademarks and help police against infringement.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

The Real Risks of Skipping Trademark Clearance

The most immediate risk of opening a business without consulting a trademark attorney is unintentional infringement of another company’s trademark. Under the Lanham Act, trademark infringement does not require intent — a business can be liable for infringement even if it had no knowledge of the senior mark and chose its brand entirely in good faith. The cost of learning this lesson after a trademark infringement lawsuit has been filed against you is dramatically higher than the cost of a preventive clearance search before you adopt your brand.

A cease-and-desist letter demanding that you rebrand is the best-case scenario in an infringement dispute. Worst case, you face a federal lawsuit seeking injunctive relief (requiring you to stop using the name immediately), actual damages, the infringer’s profits, and attorneys’ fees. Beyond the legal costs, a forced rebrand after you have invested in signage, a website, social media accounts, packaging, and marketing materials creates a business disruption that can be financially devastating to a young company.

Intent-to-Use Applications and the Startup Advantage

One of the most underutilized tools available to startups is the intent-to-use (ITU) trademark application under 15 U.S.C. section 1051(b). A startup that files an ITU application before beginning business operations secures a priority date — the constructive use date — as of the application filing, even though the business has not yet launched. This means that once the mark is in use and the registration issues, the startup’s rights relate back to the filing date, giving priority over any competitor who began using a similar mark after the filing date.

For startups raising capital, a pending trademark application — or better, an issued registration — can materially affect investor due diligence. IP-savvy investors look at the trademark portfolio as an indicator of the management team’s sophistication in protecting business value.

Trademark Considerations by Business Type

Franchise Businesses

If you are opening a franchise location, you will be using the franchisor’s trademarks under a franchise license. Before signing a franchise agreement, have an attorney review the trademark provisions: Are you getting an exclusive license in your territory? What happens to your ability to operate if the franchisor’s trademark registration lapses or is cancelled? Can the franchisor change the brand identity during the term of your franchise agreement?

E-Commerce and Online Businesses

E-commerce businesses face a unique set of trademark challenges. Domain names are governed by the Uniform Domain Name Dispute Resolution Policy (UDRP), which gives trademark owners tools to recover domain names registered in bad faith. Without a trademark registration, an e-commerce business has limited ability to recover a domain name being used by a cybersquatter. Trademark registration is also essential for enrollment in Amazon’s Brand Registry and other platform brand protection programs.

Professional Services Firms

Law firms, accounting firms, consulting firms, and other professional services businesses often operate under names that contain the founders’ surnames or descriptive terms — and then discover, years later, that a competitor in another region has registered a federal trademark for a similar name. Service marks — trademarks used in connection with services rather than goods — are fully registrable under the Lanham Act and entitled to the same protections as product trademarks.

Trademark Portfolio Management for Growing Businesses

Trademark protection is not a one-time event. As your business grows, new products, services, taglines, and brand identifiers emerge that deserve separate protection. A proactive trademark portfolio management strategy ensures that your brand’s legal protection keeps pace with its commercial value.

The Trademark Attorneys at Revision Legal work with businesses of all sizes — from pre-launch startups to established companies with large IP portfolios. Contact us at (855) 473-8474 to get started.