In 1996, I quit my day job and decided to stay home and start writing full time. I also learned to design websites and started editing and managing other people’s websites. When I first started that type of work, I was working mainly with romance writers. As a romance writer myself, that industry is where my first customers came from. I started a promotional group for those authors and dubbed it Divas of Romance.
Not long after, I began to draw on my background in business and write articles on topics such as business intelligence and design. Naturally, my clients became a mix of authors and business people. I started to call my web design and content management business Promo Divas. At first, I added the group to my overall website and later bought the domain name and created a separate site.
Then, I decided to start a page on Facebook to promote my business. Facebook shut my page down. I had no idea why. When I contacted them, they stated it was because my page infringed on a trademark for someone else. Apparently, someone had trademarked a similar name to the one I’d been using for many years. I had never trademarked my name. It never occurred to me to do so.
After consulting with an attorney friend, I made the difficult decision that fighting it just wasn’t worth the effort. You see, my brand name really didn’t fit what I was doing any longer. When I first started, most of my clients were female romance writers. Today, my clients are a wide mix between international businessmen, writers of all genres and both genders, and local businesses. Many of my male clients had commented over the years on the name of my business. I would get comments such as: “I don’t have to become a diva to have you build my site do I?”
The comments were in good fun, but they got me to thinking about the appropriateness of the brand name. Since my attorney friend and I had decided it was easier and more cost effective for me to rebrand, I decided to change my brand to something that would apply to all my clients. I feel that I really go to battle for my clients, trying to give them the very best result possible and get their brand seen over all the millions of other ones out there.
I came up with Promo Warriors (TM) as my new brand (shameless self plug). Before I ever announced it to one person, though, I decided I’d better trademark it first. It is quite a process to trademark your business name. My number one reason I would advise a small business owner to trademark their name is simply that someone else might take the brand name you’ve worked so hard to build and you’ll have to rebrand. While it worked out fine for me because I needed to rebrand anyway, you might not want to rebrand.
I actually love my new business name and branding. It suits what I do so much better than the initial name and it fits my varied list of clients.
I’m Not Alone…
This isn’t a problem only I have faced. I was recently talking to a high school friend of mine who runs a tax service business. Lori Brooks, owner of The Tax Honey in Indianapolis, Indiana, shared her experience with me in someone trying to take her brand name and use it for their own.
“There is a person who has tried to steal my business name and my brand.
I know exactly how she found my name and it was by use of Facebook paid advertising
The only difference in some of the marketing stuff is one word and that word is “the”.
I have had my business since 2009 she started hers in 2014.”
The person has even created a similar email account on the same email server as Brooks. Unlike me, Ms. Brooks has no intention of rebranding.
“No way no how will I ever rebrand. I searched that name for many years after I came up with it and there was no existence of it until 2014. I did paid advertising on Facebook which went all over the place; I can do taxes in other states not just Indiana.”
Honestly, Lori Brooks is one business who can benefit from trademarking the brand name to protect herself in future from this type of thing. Fortunately, WHSR was able to talk to some lawyers about this topic.
Lawyers Share the Inside Scoop on Protecting Your Brand
I reached out to some lawyers to get their take on protecting your brand. The resulting advice is very helpful to business owners.
Marc Misthal at Gottlieb, Rackman & Reisman
Marc Misthal is a principal in the New York office of Gottlieb, Rackman & Reisman, P.C. Marc specializes in all areas of trademark and copyright litigation and prosecution, and has extensive familiarity with domain name and Internet issues.
“A few things to start with: First, a trademark is source identifier—it is something that is used to signify that a particular good or service originated with a particular source. In the U.S., you obtain trademark rights by using the mark (for example, by selling products with hang tags or packaging bearing the mark). So the question here is not about “trademarking,” but about registration. Some reasons for registering are listed below.”
I asked Marc about how long one can expect the process to take.
“On average, it usually takes about a year to a year and a half from the time a trademark application is filed with the U.S. Trademark Office until a registration issues. Since trademark rights are based on use and not registration, if a trademark owner is using their mark while the application is pending, they have rights whether or not they have a registration.”
The following was in response to my question about whether using a lawyer would speed up the process (Marc wasn’t just self-promoting. I wanted to know the benefits of hiring an attorney, because there usually are some).
“Working with a lawyer who is familiar with the practices of the U.S. Trademark Office can streamline the application process. For example, a lawyer can conduct a search before an application is filed to determine if there are any existing registrations that might block your application; in some instances an attorney can provide tips on things that can be done to avoid having existing registrations block your application. Additionally, an attorney who is familiar with U.S. Trademark Office practice will be able to respond to communications from the Trademark Office with the information they are seeking, which can avoid lengthy back and forth exchanges which would delay the issuance of a registration. Further, if a refusal is issued, attorneys who are familiar with U.S. Trademark Office practice can often present legal arguments that can overcome the refusal.”
There are many advantages to trademarking your business name and/or logo. Marc shared:
“Trademark registrations are very helpful to enforcing your trademark rights.
A) They provide nationwide rights (simply using a mark gives rights only in the area in which the mark is used).
B) Once a mark is registered, you can use the ® symbol to show that it is registered.
C) Registrations prevent third parties from registered the same or similar marks for use in connection with the same or similar goods or services.
D) Trademark registrations can be recorded with U.S. Customs and Border protection to prevent the importation of counterfeit products.
E) Some online platforms will only take action against infringers if you can provide evidence of your rights, such as a trademark registration.”
Michael Cannata, Partner in Rivkin Radler LLP’s Intellectual Property Practice Group
Michael Cannata, a partner in Rivkin Radler LLP’s Intellectual Property Practice Group, shared his input on registering a trademark.
Securing a federal trademark registration is one of the most practical and cost-effective ways that business owners can protect their brand.
To be sure, there are a multitude of benefits enjoyed by owners of federally registered trademarks. For example, trademark owners are afforded nationwide priority in their trademark. This means that trademark owners, subject to certain exceptions, maintain superior rights to use their registered trademark throughout the United States.
Another benefit of federal trademark registration is that the U.S. Patent and Trademark Office will refuse to register any trademark application that is confusingly similar to a registered trademark. This important function may deter third parties that, unknowingly, attempt to register and exploit a similar trademark.
Finally, another benefit of federal trademark registration is that owners of a registered trademark can use the well-known “®” symbol to place others on notice that a particular trademark is registered with the U.S. Patent and Trademark Office.
Randy Friedberg, Partner White and Williams LLP
Randy Friedberg, Partner at White and Williams LLP, took the time to answer some questions about trademarks for us as well. Understand that trademarks in the US work in a certain way. Randy shares:
“In the United States (as opposed to most of the world) rights are established by use, not by registration. Therefore, regardless of registration, use in commerce will give the owner common law rights in a trademark. However, these rights are going to be limited to the geographic area in which the mark has been used, and only for the goods/services. Therefore, for example, if I am using a trademark for shoes in New York and New Jersey, and someone begins to use the same mark for the same goods in California, there is nothing I can do about it. If they try to expand to New York, I can stop them. If I try to expand to California, they can stop me.
On the other hand, a federal registration gives the user rights throughout the country regardless of where the mark is actually used and can last forever if properly maintained. In addition, a registration creates a presumption (rebuttable not conclusive) that the registrant owns the mark and is exclusively entitled to use it. In addition, 5 years after a registration issues, the registration can file an affidavit and the registration becomes incontestable, meaning there are very few ways to attack it.
Finally, many social media sites and online retailers require registrations in order to own a domain.”
Hiring a lawyer is helpful with the process, as I mentioned before. I asked Randy how hiring a lawyer could help and here is his response:
“There are a few things a knowledgeable practitioner can and should do. In large part this means knowing how to avoid trouble, i.e., choosing the correct specimen of use, describing the goods/services properly, understanding the proper date of first use….
In addition, if an application is filed as intent to use and the client needs the registration at least in part expeditiously, the applicant may be able to save a couple of months or so by dividing the application and amending part of it into a use based application.
It’s a bit self-serving but I think it’s important to understand that I do not believe a trademark registration should be sought without guidance from a knowledgeable practitioner. It might seem fairly simple to do online, but there are many landmines to be wary of. Finally, an advance clearance search is essential in order to understand the risks of adopting or registering a prospective mark.”
There are many benefits to registering a trademark.
“A registration can act as both a sword (offensive) and a shield (defensive). A registration allows the owner to bring a suit for counterfeiting. A registration can be listed with the Customs Service which will stop counterfeits at the border without cost to the owner. A registration can be important in the event of a domain name dispute. Certainly it’s important for social networking and online retailer sites.”
Consider Where You Do Business
Marc Misthal explained how registration where you do business is important.
“The above only covers trademark registration in the U.S.; it is important to consider registering where your products are sold (or where your services are rendered) and where your products are manufactured. Foreign jurisdictions may not be important to your business right now, but taking early steps to protect your rights abroad can pay dividends down the road, since third parties in foreign jurisdictions often register trademarks in their home jurisdictions and then seek to sell the back to their true owners when that party seeks to enter the jurisdiction (this happened to Starbucks when it tried to enter the Russian market).”
The cost to trademark your business name can vary widely. If you choose to hire a lawyer, you’ll have to pay legal fees. If you choose to try to file the paperwork on your own, then you’ll only have search and filing fees. However, you also have to factor in your time. Since you don’t know the ins and outs of trademarking your business name or logo, you will face a learning curve and spend a lot of time reading and going back and forth with the trademark office.
According to the US Patent and Trademark Office, the filing fees start at $225 and go up to $325. However, you will have additional fees, depending on how many classes/products you are registering and other considerations. Trademarks must also be renewed according to a strict schedule. You can read all the ins and outs of registering via the Trademark Electronic Registration System at https://www.uspto.gov/learning-and-resources/trademark-faqs#164085. However, keep in mind that the process can be very confusing, that you’ll need to do a search to make sure the name isn’t already in use, and that the office may ask for additional paperwork after the initial filing.
Expect to pay out around $1000 if you do the paperwork entirely on your own and the process winds up being simpler than expected. If you choose to hire a lawyer, which is an excellent idea as the process is very involved, then you will also need to pay attorney fees. It will take an attorney specializing in trademark law far less time to do the paperwork as they are familiar with the process.
Protect Your Brand
As I learned the hard way, it is vital that you protect your brand. If you’ve spent a ton of time coming up with a unique name and model, then also take the time to protect it by trademarking your name and logo. Once you’ve trademarked it, if someone is using it, then you need to have your lawyer send them a cease and desist letter. Be prepared to protect your trademark and your business.
Not only is it important so that customers know they are doing business with the correct person, but your reputation can be harmed if someone else uses the same name without the same level of customer service you like to offer to your clients.
Many years ago I was promoting a client. At the same time she was working with another person who had a similar (but not exact) given name to mine. Unfortunately, she began to get confused about which one of us she was dealing with on different promotional matters. The other person did not always follow through on promises and I fear my reputation with my client began to suffer even though I fulfilled every promise and beyond. I would often have to remind her that I didn’t run this or that type of promotional program and that I was not affiliated with the other person.
If something that simple can cause confusion, imagine how much worse it is when someone uses your exact name and tries to copy your look and business strategy. Ultimately, the client faded away from my list. This happens sometimes in my line of work, but I suspect she just kept confusing me with the other person and decided it wasn’t worth working with me. That was pretty frustrating as I pride myself on follow through.
Don’t Spend Money You Don’t Have
Keep in mind that each attorney I talked with for this article mentioned that you are somewhat protected just by using the brand. If you call your business “Nana’s Gizmos” and you reside in Pennsylvania and someone names theirs “Nana’s Gizmos of Texas”, you likely won’t be able to fight it like you would if you had a federal registration.
But, that doesn’t mean you should spend thousands of dollars registering your trademark when you are barely making enough to pay yourself. Instead, wait until your business has grown to the point that you can afford to register your trademark. Consider it just another business expense like any other and make that investment in your business to protect it.
Yes, you will risk someone else registering it, but if you can prove you’ve been using the name all along, they likely won’t win a battle over it as they should have done their research before filing.
Ultimately, my decision was that while I could prove I had come up with my name first and while the person ran in similar enough circles that I knew she’d likely seen my business name and either purposefully or subconsciously taken it, it was not worth it for me to fight to use it and incur legal fees, when I could just use that money to rebrand and register my new name.
In my case, my new branding works so much better for my business model and my current client base. It was the smartest decision I could have made. If you are facing a similar situation, you just have to decide where you want to put your money. Do you want to fight and keep the brand you’ve built or do you want to move on and register your new brand before ever announcing it as I did?
I learned a valuable lesson from the experience and I hope that you can learn from what I’ve gone through and avoid similar pitfalls. Whether you decide to register now, register later, or completely rebrand, know that your personal reputation with your customers is far more important than what you actually call your business.