Vital advice on intellectual property from a trademark attorney to help you protect your business.
By Laura Slezinger (Intellectual Property & Advertising Attorney, Venture Gained Legal)
My client was annoyed. “How did you even think to search for that???” Not annoyed at me (I hope), but at the news I had conveyed to him.
He was a successful serial-entrepreneur with a few software patents under his belt. He was financially successful, experienced in business, and very smart. Silicon Valley-autistic scale smart. He and his partners were starting a new business and wanted me to file for the trademarks. He told me he had already researched the marks and no one was using them so he didn’t want to pay for a search, just the filing. “OK” I told him, “I’ll do a quick search myself, because I can’t conscionably file for a mark if I don’t know whether it has a chance of being rejected. It won’t cost you.”
Within the first minute of my search, I found an existing trademark that would prevent him from filing for the mark on the name he’d chosen, and recommended they change their name while things were still early stage. When I told him about my search and what it had uncovered, he was clearly frustrated. Partially because he and his team would have to change the business name, and partially because he had not found what I had found so quickly. How did I think to search for that?
Because I’m a trademark attorney. That’s what I get paid to think of.
First of all, what a trademark is:
A trademark is your business name, your product name, or a catchy slogan that will be associated with your business or product. Examples are: Nike (business name), Air Jordan (product name) and “Just Do It” (slogan). Trademark registration gives you a limited monopoly to use your mark in conjunction with your specific goods or services. So, Nike may prevent other shoemakers from using the name “Nike” on their shoes but they can’t prevent people from using the word “Nike” when teaching art history classes on Ancient Greek Sculpture or from using the word to refer to their company when necessary, such as in a news story involving the company.
It’s fair use for me to say I want to go buy a new pair of Nike shoes, or to say Nike stock is up; it’s not fair for me to use the slogan “As good as Nike!” for my discount athletic shoe line. The nuances of all this is for another post, but at the core, trademark law is meant to protect consumers from being deceived. It does that by preventing competitors from using the same names, logos or slogans – which would confuse the customer as to the origin of the product. If you think a phone is an iPhone and buy it because you want an iPhone, only to find out that it’s a cheap iPhone knock off sold in packaging that looks just like Apple’s, you’re gonna have a bad day. What if Bing called it’s search portal “Google” and you un-wittingly used it expecting to receive Google search results?!!! The Horror.
Brand Identity is Crucial
You know this, you don’t need me to tell you this. Without a shred of trademark law knowledge, you know how important it is to have strong brand identity. But knowing a little bit about trademark law will help you to choose a name wisely and be able to leverage your rights to build your brand.
3 Key Guidelines for Choosing a Mark
These guidelines should be used in conjunction with or on top of any guidelines that are from a pure branding perspective, and are not meant to fully replace but supplement them.
Be Creative, Not Descriptive
The strength of a trademark runs on a continuum of categories from ‘Fanciful’ to ‘Generic’.
The strongest marks are “fanciful” or “arbitrary”; the weakest are “descriptive” or “generic”:
STRONGEST ————————————————— WEAKEST
FANCIFUL ARBITRARY SUGGESTIVE DESCRIPTIVE GENERIC
Legally you can’t even register a generic mark, and in order to register a descriptive mark you must achieve “secondary meaning.” I can’t register the trademark “Shoes” for footwear products, because it’s generic. Everyone understands this innately; it’s not fair for one company to have a monopoly on words needed to describe a given product. And, it’s boring.
Likewise, a descriptive name, such as “Silicon Valley Tech Company” for your startup, is not going to be registrable until you’ve used it for many years and established brand recognition. Even then, you’ll never be able to prevent people from using the phrase “Silicon Valley tech company” to describe a Silicon Valley tech company. So your mark would have what is called “thin protection.”
‘Fanciful’ and ‘Arbitrary’ names are best. Apple for computers is arbitrary because, well, apples have nothing to do with computers so that’s an arbitrary word (rather than suggestive or descriptive association). Google is a great name – it’s a tweak from an existing word (googol), not a word itself, so no one will ever need to use “Google” for anything other than the company and its products (whereas, people use the word “apple” for many things besides Apple products). Google is suggestive as a mark in that the original word “googol” references a number with a hundred zeros which brings to mind how many search results you get by using their search.
If a suggestive mark is closer to the descriptive end of the spectrum it will have less protection than one that’s towards the arbitrary end of the spectrum. This is an art, not a science.
Fanciful and Arbitrary names are strong from a trademark perspective because there is little justification for “fair use” by competitors to use your name and it’s easier to distinguish situations of infringement.
Don’t be a Copycat
I probably don’t need to tell you not to copy, wholesale, another company’s name. But also avoid similar sounding names and family names, e.g. the “i-family.” If the naming protocol has become popular, particularly if its popularity is all coming from one company, don’t try to free ride off their fame by using a shared prefix or suffix or something of the like. For example, you’re probably familiar with the popular word-game called “Words with Friends”? Zynga is the owner of that game as well as other games in the “with Friends” family, such as “Gems with Friends,” “Hanging with Friends,” “Chess with Friends,” and others. Well, when a new matchmaking application for, ahem, casual sex, called “Bang with Friends,” debuted the folks over at Zynga were none too thrilled. They were in their rights as the holders of the
Trademarks on all the “with Friends” marks to have their attorneys communicate some choice and persuasive words to the upstart, following which “Bang with Friends” rebranded theselves as “Down.
So, as tempting as it may be to hop on such a lucrative bandwagon, that type of free-riding is exactly the sort of thing that can be confusing to the average consumer, and is considered an infringing use. So be creative, and start your own family!
Clear Your Name Before Committing
I know: you really like the name. REALLY, REALLY like it. You’ll be very upset if you can’t use it. This name will MAKE your company. Who says you can’t use it anyway?
What do they know? Why are attorneys always trying to ruin all the fun??
You’re in business now, so pull on your big girl pants and think strategically, not just emotionally. Even if you can get away with using a name someone else is using, or a similar name, for a while, it rarely works out in your favor in the long run.
A new client reached out to use my trademark services. She was bothered because some new organization was using the same name as her business that she’d been operating for 5 years, in the same industry. As I was listening to her and getting the facts I started some very basic research on the web. Her website was not a dot com. While I’m not going to get into a conversation about the relative value of the different TLDs, if a client isn’t using a dot com, I immediately assume that that’s because it was taken already.
So I pull up the dot com. It’s being used by another company, of the same name, that is based in France, operating in the same industry, and now an international player doing business in the U.S. A moment later I searched the US Trademark database to discover this French company had registered their mark in the US prior to my client starting her business, 7 years ago.
As a result, she couldn’t obtain registration for the name and, if she made a fuss about the new organization, she’d potentially jeopardize her own use of the mark due to the existence of this French company whose mark had priority. She’s now looking at having to completely rebrand her company, buy new domains, have new collateral and business cards printed, and the headache of getting the word out to an industry that has come to know her company by another name.
So have your name cleared first, and preferably by someone who knows what they’re doing, not by a mere Google or Facebook search of your own. There are plenty of very reasonably priced trademark practitioners out there who charge less than the big firms and deliver comparable work. Even a few grand is a small price to pay for piece of mind. Entrepreneurs have enough to worry about – don’t add more!