Trademark Registration and Barney Fife: Nip it in the bud!

I’m sure I’m getting old here, but if you’ve ever watched Andy Griffith’s old show, Deputy Barney Fife’s frequent advice to Sheriff Andy Taylor, for whatever challenges or tragedies Andy or Mayberry might face during that particular episode of 30 minutes. It was “Cut it, cut it on the yolk!” Very good advice, especially when it comes to trademarks.

Nipping something in the bud means “stopping something at an early stage”. Stop it before it becomes a serious problem. We can certainly apply this obviousness to trademarks and, in particular, to the federal trademark registration.

There are many advantages and benefits of registering your trademark. The benefit I am referring to in this writing has to do with the notification. When you register your trademark, the federal trademark office publishes your registration for all to see. When a third party, for example, conducts a trademark search on a trademark similar to yours, that third party will see your registration and thus receive a notice of the already existing use of the trademark. That is important.

Let’s say you adopt a particular name for a product in your business. Decides not to apply for trademark registration. Later, Company A independently decides to start using a very similar name with a product similar to yours. Before Company A starts using the trademark, it performs a trademark search, which turns out to be clean (since you did not register your use of the trademark, and therefore your use is not registered). Company A begins to use the mark in commerce. Company A is a fairly large company with a large advertising budget. So unsurprisingly, sooner rather than later, your and Company A’s marketing efforts start to overlap, causing problems.

Due to the advertising dollars that Company A has already spent, it is now unwilling to change its trademark / name. Between you and Company A, you may have superior rights to the name, however, you will still have to deal with the resulting problems caused by two entities using a similar name in trade. You will also have to deal directly with Company A, which may very well mean litigation.

On the other hand, if you had initially registered your name with the federal trademark office, Company A would have seen your registration and use from the beginning, at the time you conducted your trademark search, and more importantly, before starting to use the mark in commerce. . As a result of its registration, Company A would know that the name it had selected was already in use and that it therefore needed to select a different name. With such information at an early stage, Company A could easily go back to its marketing department with instructions to find a different name. With registration, you could have avoided all the problems described above, as well as litigation.

Take Barney’s advice, with his brand, “Cut it, cut it at the yolk!”

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