A recent conversation with the owner of a growing business yet again emphasized how critical it is to get your branding and trademarks established as early as possible.
The Coca-Cola logo is an example of a widely-recognized trademark representing a global brand. (Photo credit: Wikipedia)
Why? Because you don’t want to be a going concern, with unsecured branding and trademarks, only to have another company come calling to advise that they have the same or similar trademarks that predate your use. Or even unsecured marks that may cause confusion in the marketplace.
This is why we see “nonsense” names in commerce, like a cable company’s “Xfinity” brand. It’s a made up word, so least likely to have anything out there that predated the cable company’s use, or that is otherwise a registered trademark.
The following are a few best practices that business owners should treat as commandments.
1. Before you even begin business, settle on your company name – by first searching for relevant use or competition for that name. And the same goes for product names, slogans, and the like.
A search of state secretary of state databases, the copyright and trademark databases, and the internet in general will easily reveal any obvious prior users of the same or like names, product names, slogans, or other identifiers that you may want to use for your product, but which you should perhaps not – if there is a prior user.
Just because someone else is using the same or a similar term doesn’t necessarily make it off limits to you. But you should make an informed decision to press forward if there is a prior user. And often that informed decision should involve legal advice.
2. As you make the informed decision to use a particular company name, product name, slogan, etc., get the appropriate legal help to protect those soon-to-be company assets.
Make no mistake – your company name, product names, slogans, perhaps product shape or design, etc. — anything that identifies and differentiates your company and products from others — those are your assets!
Failing to protect them with appropriate state and federal trademark filings, and/or perhaps copyright filings, may allow competitors to use what you believe are your assets. Or worse, you may have to change your company name, product names, slogans, etc., and you may have to do so AFTER you have built up a positive reputation in the marketplace. To a great extent you may be forced to start over in building your brand because you didn’t invest in protecting the words and concepts that make up your brand, or differentiate your products from other.
A further reason to invest in formal registration of appropriate intellectual property is the benefit of “statutory damages.”
Without formally filing trademarks or copyright protectable materials, if another party infringes, you will have to prove actual damages caused by the infringement – what you have financially lost, and what they have financially gained, as the direct result of the infringement. That may be difficult if not impossible to prove.
But after proper registration of protectable materials, you become entitled to statutory damages in the event of infringement – that is, damage minimums set by law. So if proving actual damages is too difficult or impossible, you still have the option of recovering statutory damages, and often costs and attorney’s fees as well.
And with the statutory right to, at the least, statutory damages, costs and attorney’s fees, your demands to others to “cease and desist” the improper use of your registered marks and property takes on a greater weight and authority. You’ve got the “whip hand” and they know it.
3. Budget the legal and administrative expenses to get the appropriate trademark and/or copyright filings, and patent filings if needed, into your initial business plan, fund raising plan, etc.
Of course, no one likes paying lawyers and filing fees when there is so much other important work to be done, other expenses that appear to be more necessary or important, etc.
And people are often tempted to try these filings themselves, at a “DIY” cost instead of with legal fees factored in. That’s fine if they get it right. But a complete waste of the DIY money if they get it wrong – and resulting in none of the intended protections.
I often hear the lament from business owners that the money they thought they were “saving” at the outset – by not hiring an attorney to do the appropriate trademark, copyright, or patent filings, ends up being some of the most EXPENSIVE money they so wish they had invested.
These are your company’s identifying assets. Treat them like the critical elements that they are.