Microsoft recently made an about-face with their planned name “Metro” for the user interface of their upcoming Windows 8 operating system. The Metro moniker had been used in many public settings, such as third-party developer tools and blog posts for some time, but now just weeks before launch, Metro has been replaced with the much less catchy title “Windows 8-Style UI.” It appears that the impetus for the change is the threat of a trademark infringement suit from the German retail chain Metro AG. Apparently someone in Microsoft’s legal department did not do their due diligence when it came to the trademark search for Metro.
As Microsoft now knows all too well, performing a trademark search is critical before investing in any type of marketing campaign. You don’t want to print up business cards, letterhead or invest in establishing a brand if ultimately you are going to have to give it up because you are infringing on another mark. In the Microsoft case, they ran into trouble internationally. Although this may not be as big a concern for small businesses, the connectivity of the internet allows new start-ups to have a presence just about anywhere in the world. So even if you start small, doing a thorough trademark search can be a valuable investment.
Microsoft’s Metro mistake demonstrated the importance of having a trademark search done right. Certainly there are public databases available where a small business may do their own trademark search. For example, federally registered marks may be searched at the United States Patent & Trademark website (www.uspto.gov). Individual states also maintain trademark registries that may be searched. The state trademark registries are often part of the Secretary of State’s office, though in some states, the registry may be a department of its own. Also, internationally registered trademarks may be searched at the World Intellectual Property Organization (WIPO) website (http://www.wipo.int/romarin). Doing an internet domain search is also a good idea. There are many websites where you can search potential domain names and provide you with information about owners of domain names of interest.
These self-help searches, however, should not supplant a thorough search conducted by a trademark attorney. A good trademark attorney will not only have the experience to do a thorough search, but will also have additional resources so you can be confident that your trademark search results are reliable.
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