Old Navy’s 2011 holiday campaign invited “customers to ‘Come fun, Come all’ and experience the secret source of all Old Navy fun—the place where the brand’s quirkiest ideas are born and tested,” a place Old Navy called “Funnovations, Inc.”

Sounds like a fun campaign, right? The only problem—since at least 2009, Woodplay, the “Original Redwood Playset Company,” has used Funnovations™ as the brand name for its line of accessories for its playset products.

Old Navy’s little mishap got our wheels turning. If a Fortune 500 Company like Gap, Inc. (the parent company of Old Navy) doesn’t know about researching trademark before launching a campaign, perhaps others were not aware either.

One of our service lines at Gavin™ Advertising is trademark, service mark and copyright management. For this blog post, we decided to bring in an expert. Without further ado, we’re happy to turn this blog post over to our first-ever Guest Blogger, Andrew M. Paxton, from CGA Law Firm. Andrew concentrates his practice in business law, real estate and taxation with a particular focus on intellectual property, technology and emerging business matters.

Andrew, take it away…

When you invest so much time, money, and effort into a brand, it can be devastating to find out that, not only has someone else used it first, but you may be pre-empted from using it at all. As demonstrated by the situation in Old Navy’s Funnovations campaign, there is a two-step process to minimize the likelihood of such a pre-emption.

First, it is important to research the brand, slogan or mark as part of the development process. You do not want to get too far down the road and find out that a simple search of the U.S. Trademark Office’s database would have shown three other similar marks. The second step is to take action to protect your new mark. This may be as simple as beginning to use the mark in commerce, or may involve a state or Federal application to register the mark.

A trademark is intended to designate the origin of goods and services to consumers. As such, a mark that causes a ‘likelihood of confusion’ to the consumer may be infringing on a trademark that has been used or registered earlier.

It is important to search and determine if there are any other instances or registrations of a similar mark for a similar product or service. The most basic way of doing this would be to use your favorite web search engine and see if a similar mark is used—or has been used in the past—for similar goods or services.

The U.S. Trademark Office’s website has a searchable database of all Federally Registered Trademarks, which should be reviewed as well. Even if you do not find any registered marks at the Trademark Office, or locate and similar marks in your web search, you are not guaranteed that your mark is clear to use. An additional option may be to pay a third party for a comprehensive search, which will include not only the web, Trademark Office database, but also state databases such as Departments of State, for corporate filings. These paid searches will vary in price, but can be costly. You will want to do a cost benefit analysis, based on your search results and your comfort level of moving forward.

After you determine that you want to move forward with a mark, there are a number of ways to obtain protection. The simplest way is to begin using the mark with the specific goods and services which it is to be associated. Trademark ownership is generally determined by date of first use. “Use” must be more than planning to launch a campaign, or development of a mark or logo. It must actually be used in connection with the goods and services in order to obtain the date of first use.

If your use of the mark will be limited to one or a few states, you may decide to file for a state registration of the mark. This will provide a definitive date of first use, and puts other parties on notice that you are using your mark with the particular goods and services. The protection of a state registration is limited to the state in which the registration is filed. Typically, these applications are not “prosecuted,” meaning that there is no substantive review of the registration, unlike a Federal Registration.

Filing an application with the US Trademark Office is a more complex process, which requires proof of use, or an intent-to-use the mark, as well as a definitive summary of the goods and services which it is to be associated. The Trademark Office will review the application to determine if there are other similar marks registered, if there may be a likelihood of confusion with unregistered marks, or if the mark fails to meet other Federal Trademark requirements. If you are successful in obtaining a Federal Registration for your mark, you will receive protection throughout the United States. In addition to providing notice to all other potentially infringing parties, the Federal Registration enables you to recover statutory damages and attorneys fees in the event of infringement. This is important, as you would not have to prove actual damages based on the infringement, which can be very difficult. Damages, costs and fees may quickly add up for an infringing party, which is why most infringement actions are resolved after the initial cease and desist notice and follow-up correspondence.

In summary, you most definitely want to search to determine if any other party has registered, or is using your mark, prior to investing money, time and effort into development. This is true even if you do not want or need to register the mark.

If Old Navy would have completed a simple search when “Funnovations” was still on the drawing board, they would have saved themselves significant time, costs and embarrassment. Unless you will be using the mark nationally from the start, you may want to consider the costs of the Federal Registration, versus the benefits you will receive. You may always decide to apply for a Federal Registration at a later date, and rely on your original date of first use.