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A Cautionary Tale about Trademarks
Here’s an all-too-common scenario. Imagine you – on a Friday – such as the Friday before a holiday weekend, just wrapping things up. Then you get a cease-and-desist letter telling you to stop using your trademark(s)!
Cease-and-Desist Letters always seem to arrive late on Fridays
Of course, you would be surprised and angry to have received a cease-and-desist letter, completely out of the blue. (That’s how they typically arrive). How could it be that someone else could have the rights to the name of your business/product/service – and they want you to stop, pay up, or face the consequences (queue ominous music).
Why me?
To say you would be livid would be an understatement, right? You have been using this name/mark for years without issue. You have been growing your business and its social media footprint (making your business more visible to everyone – as it turned out) and things were going well. Why did this happen now?
TM search: Always a good idea
It’s always a good idea to conduct trademark searches, preferably before you starting using the name/mark. This can be done at the Trademark Office’s website. An IP attorney can help you. Depending on the search results, there are several options to consider. If it turns out that someone else has registered your mark – and is using in connection with your goods/services particularly – that is a problem.
How long they have been using it vs. your usage is also a factor. You may need to consider changing your mark or face the possibility of a cease-and-desist letter at some point, probably as your visibility grows. Ideally, this would be avoided by choosing a unique mark and pursuing your own trademark registration. You want to avoid paying license fees to use someone else’s mark or getting dragged into expensive litigation.
It’s better to avoid problems rather than try to fix them!
Which costly option to choose?
If you find yourself using someone else’s registered trademark, there are several options – cease and desist using the mark. This option can be expensive, but it rips off the Band-Aid® and allows you to move on. Still, you must inform customers and rebuild your brand and goodwill. A situation to be avoided.
You could choose to pay a license fee that likely will go up over time and make you more dependent on the trademark owner as your business grows (like being held hostage).
Finally, you could fight the trademark owner – this is highly fact-dependent and likely very expensive.
Rename and Move On
Faced with the previous options, I often recommend ceasing use of the mark, rebranding and moving on. It is not ideal to say the least – but the best of the unattractive options. Now you need to change websites, videos, and all sorts of materials – and you need to come up with a trademark that avoids this situation all over again!
How could this have been avoided?
As I mentioned earlier, developing your own mark is the best option. If you are using a marketing company, please include your IP attorney. If you do not have an IP attorney, please get one at this early step. They can help clear and marks (words and logos) early on to give you a clear picture of what is available and avoids mine fields in the trademark space.
Develop your own unique mark. There are numerous ways to do that – sometimes combining portions of words to create a new word (be careful to check foreign languages) can be an approach.
Another could be to do the “Scrabble®” approach – dump the box of letters on a table and see what appears (not a sponsor).
Companies often pay consultants large sums to come up with new marks – a good example is Axalta® – the new name for DuPont Performance Coatings after the Carlisle Group purchased it. They began using it in advertising, including NASCAR® to build brand awareness. It can take time, but is usually worth the effort.
Bottom Line
The best way to avoid costly problems is to get help early – make sure you protect your ideas to avoid those cease-and-desist letters.
Disclaimer: The preceding article is for educational use only and is not intended as legal advice. Please consult legal counsel for taking any action.
Links:
Do you have questions about trademarks? I put a lock on your ideas®. www.patentbaron.com
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