Asked and Answered #6

In this episode, we provide tips on selecting a business or product name and registering it as a trademark.

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Music: “Dueling Duality” and “Where Do You Belong” by Cullah.

Transcript:

Eric:                 Hello and welcome to Ask and Answered! Revision Legal’s Podcast that provides legal tips, insight and answers for people and businesses that make a living online. It’s another Friday. I’m joined by my partner John Di Giacomo.

John:               Happy Friday. I am wearing a suit today which is–

Eric:                 Really?

John:               Yeah, unusual. I’m in court. No jeans and t-shirt though it’s jeans and t-shirt weather here. It’s actually pretty beautiful. It looks like summer has arrived which is awesome.

Eric:                 Yeah. I forgot to introduce myself, I’m Eric Misterovich. I am wearing jeans and buttoned down and a hat right now. I got my Brewery Vivant hat on, rockin’ it.

John:               Yeah. I saw the Wallonia rooster. I thought that’s what it was.

Eric:                 Yeah, exactly. I love it. I wear it all the time. I get a lot of compliments on it. Burberry Bavant’s a great Burberry in Grand Rapids. They’re very smart about how they handle their trademarks.

John:               Yeah, which is a good subject, really, how to pick a name. Because when you’re a company like [Burberry 00:01:24] Bavant or really any company for that matter, picking a name is one of the more important things that you can do in your business.

Eric:                 Exactly. Yeah. Today’s episode will all be centered around how to pick a name, how to pick a name that can be protected, how to protect that name not only in trademark sense but in a domain setting, things to think about when you’re picking around those ideas. It’s a tough process to name a product. I was just thinking about naming a baby and the process that goes into that. That’s a lot of same things come up, when you’re trying to name a business or a product or a service. You’re assigning this arbitrary name to a thing and you want that to fit.

You don’t really know how it’s all going to come together. There are so many options and you just rack your brain, thinking about this stuff and making lists and cross some things out. Hopefully, this episode will provide you some way to narrow that list and to think about only include names that are going to be protectible in the long run.

John:               Yeah, it’s a really good point. We want to make life easier for you. Although they didn’t have to think about “Am I going to get made fun of for this name?”, which is one of the primary considerations when you’re naming a kid, which is why my name is John and not Rocco, as my mom had some say in the matter because my dad wanted to name me Rocco, we’re here to steer you in the right direction to, not only help you pick out a good name but also pick out a name that really helps you keep the good will in your business through your trademark protection.

Eric:                 If you’re going to go through all this trouble to build something and spend all of these hours and sweat, building a business, building a product or service, you want to be able to protect your name. So many times, we get calls from people after the fact they’ve been doing two years and like, “Hey, I want to get a trademark”, and we’d them all the problems. Maybe it’s a problem just, well maybe you won’t obtain a registered trademark right now, that’s a problem but it’s on the smaller scale. You could run into a problem where you’re infringing on someone else’s trademark. Now, you’re really running a risk of potential litigation over this.”

John:               Yeah, absolutely. That’s the biggest problem, is that it’s very expensive to re-brand. This process, though it’s painful for a lot of people and a lot of time they lose their favored names because they come to us and say, “Hey, is this clear? Hey, can I register this as a trademark?” Then we have to tell them, “Sorry, no, it’s not clear. I know you can’t register it.” That process, it’s important and it’s cheaper at the outset than it is to re-brand in the future. Re-branding in the future is a vastly expensive proposition.

Eric:                 It’s just such a headache. A good example of this is if you listen to the startup podcast. They went through a name, there’s one episode about how they pick their name. It was really funny to hear just the struggles that these guys were going through trying to pick a name for, essentially, a podcast broadcasting company. They ran into a bunch of trademark issues and had their favorite names rejected by their attorneys. They eventually came up with a pretty unique name, but it’s an interesting process. If you’re going through that or starting a business, you should really listen to that startup podcast. It’s pretty entertaining.

John:               Yeah, I haven’t heard that yet, I’ll have to check that out this weekend.

Eric:                 Yeah. It’s definitely worth a listen. Let’s get into how to pick a name. Before we start though, I do want to tell everybody we have a trademark e-book now. It will be available on the website by the time you’re listening to this podcast. It’s free. You join our mailing list, you get this e-book that you can save and use as a reference for trade mark issues that come up along the way. It’s a handy guide that should answer some of your basic questions about trademarks, about how they’re used, how they’re protected and maybe, we’ll save you some time instead of searching around the internet to try to answer your question. Hopefully, we’ll have a book that you can turn to.

Go to revisionlegal.com, download that free e-book and then you also get our… We’ll send out weekly newsletters and give you some more tips and advice on things that we think are important for people that make a living online. Getting right into it, branding. We’ve talked about how important it is, how hard it is to pick a name. But I think we also know what this idea of branding is just ubiquitous now. It’s everywhere. Everyone has a personal brand.

John:               Yeah, they really do. A brand is important. Without a brand, I guess I’m going to get really philosophical because that’s what I do, branding is important because of a psychological concept called lowering cognitive search cost. With distinctive brands, the ability for the consumer to recall that good or service, that product that they’re looking for is easier. It’s just easier for them to find you.

That’s really what it’s all about. People like to interact with brands as well. They also like to feel. I guess there’s a very emotional response to a brand, that’s what I’m trying to say. That plays into the goodwill calculus as well. It’s important to select a mark that, from a legal perspective, is protectible, but also from a really practical perspective, serves that purposes that you want it to serve when you’re creating that brand.

Eric:                 Yeah. I know, that’s exactly right. You wanted people to be able to recall that, you want them to be second nature to link your brand with your good or service. It’s a difficult thing to do but that brand identity is usually established, not just by the company name or slogan or logo, but in over-all, impression of the business. I think the trademark, the perks of that over-all impression are the trademark aspects of this. It goes into everything of how you build your brand like type of copy put on your website. We’re seeing the more playful language used almost everywhere now. What was once almost like a male chimp type way of talking to its consumers is now used by almost everyone.

That goes into the brand and your logo and your trademark and all that kind of ties together to form this impression. Like I said, at the heart of it is this trademark, this mark of your business. These trademarks are everything you’re working for for your business are embodied in this mark. Most people don’t understand the very basic ways trademarks are analyzed. Why would you unless you went to law school? There’s certain levels of strength associated with marks.

John:               It’s basically a scale. Think of the rope tied across two points. At one end of that rope are generic names and those are names that point to a specific class of goods or services. For example, smartphone is a generic term that point to a class of goods which are smartphones. Those are not capable of achieving trademark registration. You’ve got, next to those, descriptive trademarks, trademarks that directly describe the goods or services or characteristic of the goods or services sold under the trademark.

For example, if you’re selling apple pie and you name your pie ‘apple pie’, it’s descriptive. It, basically, is describing a quality or characteristic of that pie. Good example as well is ‘apple pie for candles’. When you use ‘apple pie’ in association with candles, that’s also descriptive because the candles likely have an apple pie scent.

Eric:                 Yeah. I think, the fact that descriptive marks are weak from a trademark view, it’s maybe not apparent to most people because a lot of people want to pick a name that describes what they do to their potential customers. When they look at that name, they don’t have to think about anything. They don’t have to make a connection. It just says, ‘apple pie candles’.

John:               Right. The biggest problem is that ‘apple pie candles’ doesn’t point to you, it points to the candle. Another reason why we don’t allow or we make it difficult to allow registration of descriptive trademarks, is basically a free speech issue. It’s that, we don’t want to pull these common terms out of the daily usage and create a limited monopoly around them.

Eric:                 Yeah, exactly. It makes sense when you think about it that way. But it is one of those things where I think a lot of people make their first call of, “what are going to name this business?” We’re going to include what we do in the business name. There’s ways of doing that without exactly describing the good itself.

John:               Yeah, that’s the suggestive mark, the elusive suggestive mark. I always say elusive because, what is it? No one really knows this is the line where we always like to argue. Suggestive marks are intended to indicate the nature, quality, or characteristic of the goods or services that are offered under that mark. An example that I always is the term “greyhound”. The term “greyhound” is suggestive of bus services because it requires an extra step in the thinking process to equate greyhound with the speed of that bus service.

Suggestive marks have that extra cognitive step. Again, I say we like to argue over this because extra-cognitive step, what does that mean? That’s really a question. What does it mean? That’s why suggestive marks are difficult to identify.

Eric:                 Yeah. It’s certainly different than speedy bus service.

John:               Yeah. It’s [inaudible 00:12:30] different.

Eric:                 Yeah. Speedy bus service would certainly describe exactly what you’re providing instead of the source of those goods or services. I think greyhound is a great example of that because it does call that characteristic out but it’s not the same as the next level of stronger mark which is an arbitrary mark. These arbitrary marks are when you use a common term in association with goods that are dissimilar for that term. Apple to sell computers, Amazon to sell books, these are common words that have absolutely no suggestive nature as to the underlying good or service. While that may sound strange from a business naming standpoint, it’s really strong from a trademark standpoint.

John:               All the best brands are, typically, arbitrary or what we call fanciful marks. That’s exactly why. It’s because, when you build good will into that brand, this magical thing happens. The signal-to-noise ratio drops. All of a sudden, Apple becomes Apple. It’s not microprocessing computer corporation, it’s Apple. You know Apple, everyone knows Apple, same of Amazon. This little magical thing happens where people arrange around the brand because there is no association and these brands are able to rise to the top of the commercial market because there’s nothing else like them.

Eric:                 Yeah, exactly. In the highest level of trademark strength, that’s one step removed from this arbitrary mark is the fanciful mark which is just a made up word, essentially. A common example of this is Kodak which is now becoming a little bit of an outdated reference. I don’t know if Kodak is even in business anymore.

John:               I don’t either.

Eric:                 I was just thinking of this. We use a service called Trello. I think that’s a made up word, TRELLO. It’s a project management system. Made-up words, these are the strongest possible marks you can have. While it may be a little bit more difficult to first announce that as a brand name from your internal thinking, you should be certainly looking to fall into the fanciful or arbitrary mark category when coming up with a name. When you’re kicking around these ideas and you have this long list, cross out anything that is descriptive or generic. Suggestive is okay. But arbitrary fanciful are really where you want to fall into.

John:               Yeah, it’s possible definitely. You can get a trademark for a descriptive trademark but the problem is that it takes, it’s presumed to take 5 years. In order to get trademark protection in a descriptive trademark, you have to acquire what’s called secondary meaning, which means that the average person comes to see that descriptive term as being exclusively associated with you.

That takes a long time. It might not take 5 years. It might take 10 years. It’s easier at the outside to pick one of these more distinctive trademark types, suggestive, arbitrary or fanciful, to not only protect your brand, to get trademark registration, but also to make sure that consumers get to you.

Eric:                 Yeah. That’s a good point the secondary meaning. If you’re listening to this and you have a business and you’re concerned that it falls within this descriptive category, it doesn’t mean you can never obtain a trademark registration. Like John said, it’s going to take longer because you have to establish the secondary meaning. That’s a complex question of when do you have secondary meaning, how do you establish it. There’s no one answer to that. It can be complex but you have to use it for at least five years, like you said.

If you’re sitting there wondering, “Oh! Did I already mess this up?” The answer is probably no, probably not. You can probably still obtain registration, just maybe not right now.

John:               Yeah, absolutely. I always talk to an attorney about these types of things but it’s likely that you’ve chosen a pretty decent name. If you’ve used it of long enough, there’s a possibility that you’ll be able to obtain trademark registration. Frankly, if you don’t know, then you should contact an attorney because you might be facing some hidden liability for trademark infringement. If you can catch that before it becomes an actual problem, then you could really mitigate your risk and figure out an exit plan, which is really, it’s a lot better than getting sued, obviously.

Eric:                 Yeah. Trademark infringement is … You may think that is something that’s reserved for big companies to fight about, it’s not. Picking these names and avoiding trademark infringement should be near the top of your list, in factors when deciding a name. Because, it can happen to anyone, it’s expensive. Why don’t you just cut that step out by being probably-active and not having to worry about, “Oh, someone’s going to come writing me cease and desist letter sometime because I didn’t look into this issue.” Definitely, it’s something to think about and really not ignore no matter what size of business you are.

John:               Yeah, absolutely. It’s good for us, it’s bad businesses.

Eric:                 Yeah, exactly. We’ve gone over… Here’s the general overview of marks that are, how they’re weighed according to trademark law. We have this scale of descriptive, bad, fanciful, good. Okay. Now, there’s other factors that trademark law has in place that can help you narrow this list. Specifically, there’s a section of the [inaudible 00:18:58] Act, that says what things, what marks are not capable of being registered?

John:               Yeah, there’s a couple of categories of marks that are not capable of being registered. There are some that just serve to be bad marks. Laudatory terms for example tend to be, they might be registerable but they tend to be bad marks. Laudatory term is a puffery term like, super or exquisite or something along those lines. Those tend to be considered descriptive and they tend to be bad marks or bad components of marks.

Another one is surnames like last names. Last names tend to be pretty bad because we don’t want to preclude people from registering or using their own last names. There’s a lot of little areas that play in the surname selection. You’ve done a little bit of work in this area recently. Do you want to discuss that?

Eric:                 Yeah, definitely. The surname issue, if you’re not describing the good or product itself, I think the next most common name is to include your last name. Again, that’s maybe good for you to try to connect and build a brand in your head but it’s probably bad from a trademark standpoint. Trademark losses, marks that are merely a surname, cannot be registered.

This falls into the same grounds of the descriptive mark meaning they can be registered after they obtained secondary meaning, but they’re not going to be able to be registered initially. It’s probably best to avoid it, if at all possible. There’s a bunch of factors that go into this now. Is it “merely” a surname? Is it connected with other words? What are those other words? If those other words are descriptive or generic then the mark as a whole, it’s really weak. If those other words are, maybe, fanciful or arbitrary, then it becomes a little stronger.

There’s questions about how popular is that surname. Is it truly a surname that a lot of people have? If it’s a relatively rare surname, then there exceptions exists and you may be able together et by and achieve registration. There’s also questions of, does that surname have any other meanings? A lot of last names may fall into that category where it actually has some type of other meaning. These are all factors that make this element a little messy.

John:               What you’re saying basically is that, I’ve got a chance to register my last name as my rap name but really, I should stick to the DJ sanctions.

Eric:                 Yes. You took the words out of my mouth.

John:               There are other categories too. Geographic term is terrible, I think. Mostly because they’ll be refused for geographic descriptiveness. We’ve got a client locally, who used a local name for the region and then tied that too a descriptive name that describes their services. I don’t want to say who they are because they might not be happy about the way that I’m discussing their mark but it’s going to take them a very long period of time to get trademark registration because they chose this geographically descriptive term and they combined it with a descriptive term, which ultimately makes it a less distinctive mark.

Eric:                 Yeah. I think that again, this is a really, really common way for people to come up with a name. They want to describe the goods, they want to put their last name in it or they want to put in the location. All three of those are terrible from a trademark standpoint. You can maybe protect all of those at some point down the road but if you’re looking to see you come up with a great name in a trademark setting, avoid all three of those.

John:               Absolutely.

Eric:                 There’s other ones I think that are a little less common, immoral or deceptive material. This is in the news right now because of the Washington Red Skins issue.

John:               Yeah, it’s really interesting. I wonder how that will play out because immoral and deceptive is so rarely used now as a means to reject a mark. It’s almost like it fell by the wayside for a while. With this Red skins issue, I wonder how they’ll treat it because immoral and deceptive, both of those terms tend to change over time. It’s interesting to see how this will play out.

Eric:                 Yeah, exactly. Who is determining what’s immoral? I suppose the TTAB or the courts will be looking at the purchasing public as to their common belief of what’s immoral. In coming up with the answer to that is something I wouldn’t want to be involved in because that’s incredibly difficult. This is one where I think, if you probably, if you’re towing the line here, and you’re a little concerned whether or not it’s immoral, you might want to think about something else just to avoid the problem.

John:               Yeah. I think the only other area where we’re seeing more of this type of rejection is in marijuana-based marks or marijuana-based applications. They’re probably not going to be refused on in immoral basis, but they’ll probably be refused based on what’s called an unlawful use in commerce. Because, marijuana is obviously still illegal under federal law. But this area clearly is going to develop more. It’s just an interesting time to be a trademark lawyer for sure.

Eric:                 Yeah. One other area that I just thought of that I didn’t put in our show notes today, or outline today. It was a doctrine that comes up with the doctrine of foreign equivalence. This one is another one where people want to use a different language for a mark. A lot of times they may be want to use a Latin term or a Spanish term or some different way of saying what may be a common saying, they think that are going to set them apart or make it distinctive by using a different language. That may not work because the trademark office will essentially translate that term into its English equivalent and see if there’s already a mark registered.

John:               Yeah, or they’ll refuse based on descriptiveness or any of the other traditional refusal [inaudible 00:25:52]. Another one that’s interesting is all these flags and coats of arms. You don’t see too many of these but the USPTO says basically that you can’t register flags or coats of arms. That’s a pretty limited class of items.

For exactly, we’ve seen trademark registrations with the Statue of Liberty, some derivations of state flags. But the USPTO here is really looking out for any registrations that contain national flags, things like, the rising sun of Japan, for example. They’ll likely reject the trademark containing that element. It really depends. It’s a tough, tough call but it’s another basis for rejection that interesting.

Eric:                 Yup. Certainly something to stay away from from a design perspective. If you’re thinking about using some flag, that should be a red flag for you to, maybe, stay away from because it might not be protectible. Names of living persons, this is another one that comes up on a somewhat regular basis. Can be registered as long as you have that person’s consent. If you’re trying to use the name of someone particularly famous, then you’re going to run into issues. This is a little confusing because of the difference between surname and name of a living person. But you can register names of living persons as long as you have the consent but you’re not going to be able to try to make some connection to someone that doesn’t want to be connected to you.

John:               Yeah, there’s definitely a prohibition on the false suggestion of a connection. There’s also common law prohibitions on that type of thing as well under the right of publicity.

Eric:                 Exactly. The big one though, the big problem with picking a name and the one that we get the most questions about is, the likelihood of confusion. This is the one we’re seeing, “Well, is my mark too close to their mark?” This is a very common question, most people run into it at some point along the way. It’s a very complex question. It’s not easily answered. I think what we’re going to do is answer this one in connection with what we think your next step should be in naming a business.

John:               Yeah, that’s a good call.

Eric:                 Just to recap, how are you going to name your business? How are you going to narrow down this list of names? Well, you’re going to compare that list to the strength of trademarks. You’re going to avoid descriptive terms. You’re going to avoid generic terms. You’re going to try to find suggestive, arbitrary or fanciful terms. You’re going to make sure you’re avoiding laudatory terms, surnames, geographic descriptiveness, immoral material, flags, names of living persons without their consent, foreign equivalents in different languages. You’re going to, maybe try to avoid these things.

Next thing you do when you narrow down this list is, you can search the United States patent trademark offices database. We’ll put a link to that in the show notes. It’s called the Tess database, TESS. Here, you’ll be able to find all of the registered and expired marks on record.

If you want to figure out, does someone have… I’ve narrowed my list to these three names, let’s figure out if someone else has them. This is where you go. This is where you go to figure that out. You type that in to the TESS database. You type in your mark and it’s going to give you its results. It will tell you if there’s anything that contains those marks.

But this is not exactly cut and dry because–

John:               No, not even close.

Eric:                 There may be… Maybe you spell your mark with two SourceSeek but someone else uses an “X” at the end. Or, maybe you type in the mark you want in association with, say software service, and someone else has the exact same mark for a restaurant.

John:               Or software is good which are two different international classes [inaudible 00:30:33] hit on the same.

Eric:                 Yeah. Exactly. Searching the TESS database, you can certainly get an idea of what’s out there. Unless you hire an attorney, you’re probably not going to get a comprehensive view of what’s out there but it’s certainly a good thing that you can do to start. You mentioned that term, “International Class”, when people are looking through this TESS database, they’re going to see marks and they’re going to see that they’re associated with this IC number. Why don’t you help us understand what that is?

John:               Sure. An international class is a class of goods, I sounds like a dictionary, “an international class”. An international class is a class of goods or services that a trademark is registered in association with. Trademarks are registered in association with some class of goods or services. The first section, I think it goes until 31 or 32, I can’t remember but the first few numbers are goods and then the last are service categories.

When you’re doing a trademark search, it’s important to not only do a broad search but also do a class-based search. These classes are somewhat standardized. They’re also standardized across multiple nations under the NICE, I think that’s how you say it, Treaty. You have these nice classes that are the same and through the World Intellectual Property Organization, they cover the same goods or services with some exceptions.

But the general idea is, when you register a trademark, you register it in association with something and this is a really good way to categorize it. There is classes that are pre-defined for you by the US Patent and Trademark office. Those are listed in a manual called the Trademark Acceptable Goods and Services manual. Or, you can make a freeform class if you understand how those classes work. If you’re good or service is not contained within that manual, you can basically make up a new class to register your trademark under.

Eric:                 Yeah. If you’re to the point where you’re registering for trademark, you’re applying for trademark registration and you’re not finding a class that fits your goods or services, probably time to call an attorney.

John:               Yeah, even before then but yeah, definitely a time to call an attorney.

Eric:                 Yeah, if you’re going to go out and try to do this on your own, you certainly can but this can get a little confusing. It’s complex. It’s really important because this is going to be the goods associated with your mark forever under those marks. You want to get it right and you want to give the right balance of describing the goods, narrowly enough to pick a specific good or service but also to, at the same time, make it a little bit broader to cover more. It’s this balancing thing. You want it to be narrow and broad at the same time, it’s difficult. If you have to write it yourself, it’s money well spent to hire an attorney to do it.

John:               Absolutely. It’s money well spent to hire an attorney because when the examining attorney on the other side, who is also an attorney where you’ve used your application, his or her sole job is typically to reject the application, to find a reason to reject the application. Nine times out of ten, you’re probably going to get some office action. Actually it’s probably not that high but it’s pretty close.

If you’re very good at office action, that office action is going to reject the application. Then, you have to submit some reason to overcome that rejection. The most common rejection that poses the most difficulty is a likelihood of confusion rejection, which we discussed before. When you analyze likelihood of confusion, there is really nine factors that the examining attorney looks at. Those are all factors that have their own factual circumstances. If you’re not an attorney, you probably not going to be able to respond accurately or substantively to those types of rejections.

Eric:                 Yeah, exactly. If you are searching through the database and you see marks that are close to your mark in terms of spelling, close to your mark in terms of the addition or omission of an extra word, the same mark or similar but in a different international class. These are all times when the likelihood of confusion issue is triggered and you’re going then probably need some help to get around it.

Just because the goods are not in the same international class, doesn’t mean there can still be a likelihood of confusion. The international class isn’t the only question that needs to be answered. It’s one of the elements that goes into the test. But this likelihood of confusion is an important part of this because if you start to use this mark, even if you don’t register it, and there is another registered mark out there, you’re opening yourself up to trademark infringement.

John:               Absolutely.

Eric:                 This is the big one you have to avoid here is, trying to reduce the risk possible. If you’re close to someone else’s mark, you either need to have an attorney provide you with a name clearance opinion on that, or you need to pick a different mark.

John:               Yeah. I think it’s important to stress, look, our audience is sophisticated. Our clients are sophisticated. They’re all typically tech companies or related. They’re smart people. We realize that the trademark market has been disrupted and that attorneys have been replaced by form filing services and that’s great. We don’t have a problem with that.

When we have a problem is when those types of services create almost impossible work to solve. That’s really the issue. It’s that I’d be glad to have you hire me after you tried to file your trademark through legal zoom because I’m going to have to clean up the mess and it’s going to cost you a lot of money. It makes my life great because I make a bunch of money off of you. That’s not a good thing.

I like to make a bunch of money off of you but I’d rather have a successful business and then come back to us. Hiring an attorney at the outset to do these types of things is smarter. It seems like it’s better to be cheap but this is an area where it’s not good to be cheap. I don’t say that because I care about doing $295 trademark filing because I don’t want to mess with $295 trademark filings. But, you don’t want to mess with those either.

Eric:                 Yeah. There’s no doubt. If you’re looking for a service to help you register a trademark, you’re going to find one very cheap. The cheapest route is not always the best route. They’re going to provide very limited services, typically. They’re certainly not going to counsel you along the way, which I think is what you need. Because, a lot of times, these things are back and forth. We need to understand what’s important to your company. How much do you have invested in this? How important is this mark to you?

Then we can weigh that in the risk analysis to give you an idea of everything you should be thinking about. Sometimes we can say, “Well, there is risk but it’s relatively low. You are very invested in this mark. Because of that, if you’re going to proceed, you just need to know that you have this risk that’s out there, but it’s not the worst risk in the world. There’s other times you’re safe. You’re walking into a firestorm if you use this mark.

I don’t care what you have protected or invested. You’re not going to be able to use this mark. We can also reach out to the other trademarks out there and try to enter into some concurrent use agreements where essentially, both parties agree to use a similar mark under defined limits as to how they’ll be used in association with what products they’ll be used. All of these things are just services and counselling that a mass warehouse of trademark filings which likely will not provide.

John:               Another really important point is that, a mass warehouse of trademark filings is not going to provide you with a reasonable clearance opinion that’s based on something that’s going to hold up in a infringement lawsuit to support an innocent infringement defense. A clearance opinion that’s well-drafted, that’s well thought out, that’s done by an attorney is going to provide you with the ability to at least point back to that opinion if you want to later claim that you didn’t willfully infringe someone else’s mark. Really is a really helpful tool in litigation. These types of form-filing services aren’t going to provide you with that type of opinion or at least, not that I have seen so far. They’re not going to represent you in litigation. They’re not going to know what to do. You’re not going to want to work with them. It’s just not a time to be cheap as I said before.

Eric:                 Yup, exactly. Let’s recap where we’re at. We have these trademark strength scale. I think we’ve been over that, you know what’s wrong, you know what’s weak. We have these specific marks to avoid being surnames and geographic names and a laudatory terms and things like that. We’ve talked about the TESS database and how you can go through that and find whether similar marks have been registered. We’ve touched on this idea, is there a likelihood of confusion between two marks?

Again, if you find yourself asking, “Well, is there a likelihood of confusion between these two marks?” Then it’s time to call an attorney. Because if you’re asking it, then it should be, you should get a real answer to them. I think those are our overview of the steps we think are important to pick this name or at least help you narrow down that list of names that can be protected. When you’ve decided on that name and you want to move forward with protecting it, that’s when you apply for trademark registration as John said. You get what you pay for.

We are certainly looking to form, we think a lasting relationship with clients and understanding their needs is important and it is beneficial to everyone. But that trademark registration is an important step no matter who you use to get that. Because, trademark registration brings a number of specific benefits. I always think that most important benefit is that nationwide priority to use your mark.

John:               Yeah, absolutely.

Eric:                 If you don’t have a registered trademark, you only can use your mark where you are using it. If that sounds confusing and you’re wondering where you’re using your mark, that’s the problem with not having a registered mark. Because it’s going to lead to a messy fight at some point down the road if there’s ever a claim of infringement. You get the registered trademark, you lock out the competition on a nationwide scale from using your mark in connection with your goods or services, it’s an extremely valuable intellectual property asset.

A small modern pop store owns has the same amount of power as a big corporation’s mark. Owning that is an asset granted to you by the government. It is really worth something. It’s a piece of but it can be worth a lot of money if your business goes the way you hope it does.

John:               Yeah, absolutely. Another important thing to think about is domain names, using a trademark in a domain name. It’s something that we do pretty frequently. It’s almost as difficult as picking a trademark or picking a product name. You’re running out of space now. The selection of a domain should probably factor into that analysis, don’t you think?

Eric:                 Certainly. Yes, you’re right. You probably should, one of the steps after you get into this TESS database and narrow it down, what domain names can I get that contain my mark or close to my mark? Yeah, you’re right, domain names are running out. It’s important to pick one that you want to be your face because everyone does business online especially the people that are listening to this. You make a living online, your domain is of utmost importance. You need to have one that you can protect and not infringe on anyone else’s mark. Because if you do that, you could run into issues that could cause you to lose that domain. That’s what this whole domain disputes are about.

These are typically done in arbitration proceedings called UDRP proceedings. It’s essentially, a mini-lawsuit about who should own a domain name? You don’t want to be in these. You want to avoid them especially when you’re just starting out with a business. You don’t want this problem.

John:               No, you definitely don’t. Then there’s even worse problem which is a lawsuit. There’s a federal statute called the Anti-CyberSquatting Consumer Protection Act, which basically says that if somebody registers a domain name with a bad faith and intent to profit that’s identical or confusingly similar to a mark in which somebody has rights that the mark owner can seek up to $100,000 perspective domain name. There’s a real big stick that people can hit you with if you don’t choose the right domain name, if you don’t get a trademark clearance and it can cause a lot of problems for businesses.

We litigate a lot of these ACPA cases. It’s important to factor in these domain name issues in your analysis. There’s a really great site. I met the owners before. It’s called domain tools. We use it on a pretty irregular basis. Through domain tools, you can really find out a lot about a domain name. You can find out the owner. If you find out the owner, you can buy the domain or make an offer to buy the domain from that person. If you think that it’s going to fit your business name, you can check to see whether or not there are people who are trying to use typographical errors to siphon off traffic from your domain name. There’s a whole set of tools that are incredibly valuable. Definitely check them out as you go through this analysis. But definitely keep domain names in mind when you’re going through this process.

Eric:                 Yeah, it’s an important part of it. I think everyone understands that. But you may not understand the implications that could come from picking a domain name that contains someone else’s mark. It’s really a problem and it’s certainly a reason to… If you have this likelihood of confusion issue coming up, it’s time to get some help because it can really, really be a problem.

I hope that helped. I think we’ve provided some decent help on how to pick a name. It’s a hard thing to do, to finally come up with the one that fits. But I think if you keep these rules in mind, it will help you narrow down that list.

John:               Yeah. Absolutely. Again, always contact an attorney, blah, blah, blah. But understand how to do this stuff so you save yourself money on the long run. We want to see successful businesses. We don’t want to interact with you when you’re distraught. We want to interact with you at the outset. We want to interact with you when you’re excited about what you do because that’s where we’re at our best, that’s when you’re at your best. Take these comments to heart and make sure you understand this process before you get into it. Go to our website, download the trademark e-book. Eric spent a bunch of time on it. I can’t lay claim to it.

I’ve just been lazy lately. I appreciate you writing that.

Eric:                 No, I think it’s useful. I think it’s helpful. I think people, like I said, revisionlegal.com, download the e-book, just give us your email address, we’re not going to overload you. Were going to give you a little bit of information every week about things we think are important. I think there’s issues that are coming across our desks. It’s something. It’s a tool to hang on to and to refer back to if any questions come up. It talks about everything we’ve talked about today and more. If you have any questions that you’d like us to address on Ask and Answered, feel free to email us at contact@revisionlegal.com. Until next week, I think we’ll leave it here.

John:               Yeah, this is DJ sanctions signing off.

Eric:                 All right everyone, have a good weekend.

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