Brand and Trademark

Did you know that using a single wrong word can cost you thousands of dollars? Why would you just burn up money when you can avoid it? When you start a business, it is easy to assume that once you have a name, you’re set. You’ve got your brand guidelines, your finance system, your contracts, HR and IT, and you’ve registered your name with the state. But wait! You’re not done yet-  you still need to register that name with the trademark office and make sure that no one else is using it. The term to know here is likelihood of confusion, meaning if your name sounds like, looks like, or translates to a similar mark in a related industry, you expose your brand to legal threats.

Barbara O Stephenson, Partner 300FeetOut Brand Agency

Imagine you want to start a new business. And you would not be alone, in 2025 there were 5 MILLION applications. It takes roughly $4,000 and 90 hours to set up a new digital business for a small business. For a large business that’s about $50,000 and even more hours. 

And then imagine that as you’re starting to get operations underway, you have to stop and edit everything- your vendor and client contracts, your brand, refiling all that paperwork with the state and federal government. You have to spend more hours and more dollars to update a single word because your name has to change. THAT is what happens if you don’t do your due diligence and pick a name that someone already has. 

And if you’ve been running your business for a while and this happens? It’s a very painful lesson on branding and reputation management as you pray your customers will remember your new name. Not only do you deal with potentially getting sued, you’ve got a serious reputation problem. All of that marketing and advertising you spent working tirelessly to get name recognition? Gone in a heartbeat. It’s almost as if someone else stole your product and now you have to prove again why you’re you and differentiating yourself. 

And marketing issues abound even if it's not an exact match problem. If your name simply sounds like something or someone else, the search engines of Google and AI are going to get confused. And if search is something you need to work for your business - you 100% have to avoid this. Watered down results will kill your rankings and exposure before your business even gets warm. 

And honestly, making sure your name probably avoids Likelihood of Confusion (with another company and the same name) is easy. At the very least, you can do a quick 20 minute search on your own for free on the federal government’s website. But you’re missing the ones that sound or look like yours. So to be sure, do it the extra easy way and hire an IP lawyer.

Kelly Lawton-Abbott, Partner at SSM Law

Even if you are a business owner savvy enough to navigate the USPTO (United States Trademark and Patent Office) website (which was recently improved to be much more user friendly), you’re often left with hundreds or thousands of search results; at that point it becomes difficult to determine if there is a likelihood of confusion. 

Trademark registrability is governed by the Lanham Act, USPTO rules, TMEP (Trademark Manual of Examining Procedure), and case law. Which means that the analysis continues to evolve over time. Additionally, to create a brand that is registrable you usually need to do the brand in a way that has not been done before. A trademark attorney will work with you, they specify the search to what is most relevant for your brand and then sort through the database to notify you of the trademarks that may be a concern for your business. If you’ve come up with something unique enough that it doesn’t result in any concerns, good for you, but it’s hard to do. 

Next up is crafting the identification of goods and/or services. While you may want to add in your marketing blurb, that’s not going to cut it here. To start, there are 45 different classes of goods and services. You have to choose which applies to your business and what fits your budget and goals. Then you need to draft the description in a way that aligns with the accepted identification for each trademark class. No points for creativity, this needs to pass rigorous standards.

Now that the description is done and you’ve submitted the application (or your attorney has done this for you), you wait, likely while you’re out there building your brand. The trademark application process used to take 4 to 7 months. Currently, the first examination occurs 4 to 5 months post submission. But that doesn’t mean it’s over from there. The average time to registration is almost 10 months. 

During that process, it is common for the examining attorney at the IP office assigned to your application to issue formal requests to revise the description or provide samples aligned with the trademark requirements. You get one attempt to resolve those concerns without paying additional fees, but it extends the time to registration. Also, the examining attorney may provide an initial refusal citing likelihood of confusion, but that doesn’t mean it’s all over. That’s where working with your attorney from the start helps first identify the risk associated with the trademark, draft the classification in a way to reduce friction during the application process, and if there is a likelihood of confusion or refusal, they can help you increase the chances of success and craft arguments to support your registration. 

To sum up, having your trademark is a growth policy for so many reasons. It’s an M&A multiplier during investments and sales valuations. It clears the way for advertising, marketing, and sales online and brand clarity for a business’s digital presence in search engines and results. It’s a risk mitigation tool to avoid costly lawsuits or having to redo your brand over from scratch. It gives your legal team teeth against copy cats or rights abuses by the competition. With so many reasons, why would you not do it? Because if you don’t, you’re just burning money.