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Posts Tagged ‘Brand Selection’

There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.”  The crash course is offered at a hefty price, but much less than four years of actual college tuition.  There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client.  These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about. 

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process.  For that reason, I have decided to present them all in one place.  So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1:  Trademark rights are created by use of the mark on your goods or services.  Registration of your mark is an important way to increase and extend those rights.

Thing 2:  There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.)  So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3:  You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application.  The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4:  Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5:  New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office.  Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6:  No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7:  The designations TM and SM that you see everywhere really have no official significance.  They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8:  You may not use the ® symbol with your mark until your mark is actually registered (not just filed.)  After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9:  You should always search a new product name (the earlier the better) before committing to it or using it.  Not doing so is a dare to the Trademark Infringement Gods.

Thing 10:  Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science.  When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop.  Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11:  Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12:  In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will.  This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13:  When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection.  I could give you a half hour on why, but just trust me on this.  You’re much better off picking a name that is not descriptive.

Thing 14:  Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration.  The reverse is not true.

Thing 15:  Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16:  It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime.  Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17:  The time to think about whether your new name will actually be available for you to use is as soon as possible.  Yesterday, if possible.  A month ago, better yet.  Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18:  Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name.  But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional.  In those cases, the aggrieved party may go straight to court.

Thing 19:  Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website. 

Thing 20:  Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21:  In the trademark world, as elsewhere, what goes around comes around.  Don’t try to nestle up to a competitor by using a similar mark.  You wouldn’t want anyone doing that to you.  Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list.  Hopefully it is helpful, though.  If I get good response on this article, I’ll think up some more bits of important knowledge.  And then, dear reader, together we can venture down the uncertain path of the sequel.

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The alleged infringing "Hell's Four Finger" Ring marketed by Alexander McQueen Trading Limited.

Someone didn’t do their homework, and it’s going to be a costly and embarrassing lesson.

The Hells Angels Motorcycle Club has sued the Alexander McQueen fashion house for trademark infringement.  The suit was filed October 25, 2010 in U.S. District Court in Los Angeles.  The club also named the Saks retail chain and Internet retailer Zappos.com as defendants for their roles in selling the allegedly infringing products. 

In its complaint, the Hells Angels club requests findings that the defendants infringed its trademarks and committed unfair competition and trademark dilution.  The club seeks an injunction preventing additional sales of the alleged infringing products as well as a recall of the alleged infringing inventory.  The Hells Angels ask that the inventory be delivered to a third party for destruction.  Finally, the club seeks money damages which it asks be multiplied because of the blatant and “exemplary” nature of the infringement, along with the club’s attorney fees for the action.

The alleged infringing "Hell's Knuckle Duster" Clutch marketed by Alexander McQueen Trading Limited.

The motorcycle club claims that Alexander McQueen Trading Limited, the fashion house founded by designer Alexander McQueen (who committed suicide earlier this year), infringed its winged skull design mark by using it in a multi-finger “Hell’s Four Finger” ring and “Hell’s Knuckle Duster” clutch handbag (see pictures.)  The suit also claims that the defendants infringed by marketing a jacquard dress and a pashmina scarf using the word mark HELLS ANGELS, without authorization by the club.

The Hells Angels club registered a winged skull design (which the club calls the “HAMC Death Head design”) in 2009 as U.S. Trademark Registration No. 3666916 for goods including “jewelry, jewelry pins, clocks and watches, earrings, key rings made of precious metal, badges made of precious metal, and chains made of precious metal.”  An image of the registered design appears at right, below.  In its complaint, the club claims use of the design since 1948.

An image of the "HAMC Death Head design" mark registered for various goods, including jewelry, by the Hells Angels Motorcycle Club.

The same design is registered separately (U.S. Reg. No. 3311550, issued in 2007) for “clocks; pins being jewelry; rings being jewelry.” In that registration the Hells Angels claim use of the mark on those goods since 1966.

What Happened Here?

This is, by all appearances, a tremendous blunder by Alexander McQueen Trading Limited, as well as Saks and Zappos.com.  You’re welcome to judge for yourself, of course, but to this observer the designs used by the defendants unquestionably are confusingly similar with the design registered by the Hells Angels.  The use of the words “HELL’S” and “HELL’S ANGELS” merely completed the effect, making it a virtual certainty that consumers would perceive some connection with the infamous motorcycle club.

Here, boys and girls, we have a perfect example of why marketers should always consult an experienced trademark practitioner well in advance of introducing a new product line.  It frankly seems hard to believe that marketers as savvy as those at the House of McQueen, Saks and Zappos.com could have failed to recognize the potential trademark implications of their actions here.  Perhaps they did. 

In any event, it’s highly unlikely that these product ideas would have survived a review by an attorney experienced in trademark law.  Right about now, it probably seems to the good people at the House of McQueen, Saks and Zappos that a review by their trademark attorneys would have been money well spent.

RING AND HANDBAG IMAGES COURTESY OF STYLITE.COM.

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Gwen Stefani isn't going to screw up and step on someone's toes in the rag trade. You, on the other hand, might.

In the preceding post in this series, I mentioned some reasons why it’s a good idea to hire an attorney with experience in trademark law to handle the application to register your band name.  There are other reasons why hiring an attorney for this process is a good idea, though.  For instance, your attorney will have the experience to know whether existing trademarks covering peripheral “merch” goods categories are problematic.

What do I mean by that?  Well, when you put your band name/trademark on goods like clothing, you are wading into an industry not directly related to music or entertainment.  The apparel industry has its own brands and, unless you’re Gwen Stefani, as a musician you may be unaware of another identical or highly similar brand name in that industry. 

Music and fashion tend to track similar trends, attitudes and tastes, however.  Both emphasize youth, rebellion and counterculture style.  This makes it understandable that similar or identical names might arise in both the music and fashion industries.  So, as an example, it would’t be surprising for a band named “RAGE OF ANGELS” to bump into an existing clothing brand also called “RAGE OF ANGELS.”

Is this a problem?  Well, if the brands are identical as in the above example, and if you hope to use and register your band name for clothing, the answer is almost certainly yes.  That’s a relatively easy call for anyone to make.  But what if the names are not identical but merely similar to a greater or lesser extent?  Now it becomes a judgment call.  And this is by far the more common occurrence, by the way.

This is no small issue.  Many bands rely heavily on the money they make from sales of “merch” goods, and tee shirts and other clothing items form a dominant part of those sales.  All the more reason to have an experienced attorney search the name for these goods at the outset, in order to avoid these problems.

An attorney with experience in trademark law is better equipped to make that judgment call.  It probably would be more than worth the cost of a bit of attorney’s time to avoid wasting $275 – $325 in filing fees (for a clothing category), not to mention whatever problems and costs may come with a challenge or opposition by the clothing brand.

You want to focus on rockin’ the joint up, not on cease and desist letters from fashionistas.  Save yourself the headaches and work with an attorney who knows how to spot a potential issue in this arena and can help you avoid problems.

PHOTO COURTESY OF FLICKR USER BRAYAN E., UNDER THIS CREATIVE COMMONS LICENSE.

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The first post in this series discussed issues related to finding a band name that is available for your use.  Now we can talk about protecting your band’s name against encroachment by other acts.

So now you’ve found a band name that everyone in and out of the band loves, and it has passed the availability searching test I discussed in the previous post.  How do you create and strengthen your rights in the name, so no one else takes it? 

Rehearsing is great guys, but maybe you should take five and get started on that trademark application for THE EEL RIVER BOYZ.

First, you use the name.  You use it in the band’s promotion and performance.  You create the same types of sites you were searching for earlier, using the band name prominently on your website, on a Facebook page, a Myspace page, and so on.

Next, you register your band name.  You register it as a domain name; you register it on the band name databases; you set up a presence on Sonicbids.  And, most importantly, you register your band name as a trademark and service mark for the goods and services you sell under the name.

Trademark Registration

Before starting down the path towards registration of your band name as a trademark, it’s important to understand that trademarks are not registered for all possible goods and services.  Instead, your trademark wil be registered to cover the specific goods and/or services you identify in your application.

So what do you sell, as a band?  Live entertainment services?  Recorded music?  What about the “merch” you’ll sell bearing the band’s name – shirts, hats, posters, stickers, buttons, jewelry, key chains, shot glasses/beer glasses/coffee mugs?  All of the above?  Depending on your budget, you’ll want to cover as many of these goods and services as possible in your trademark application. 

Coverage for Your Application Means USPTO Filing Fees

I mention your budget because the U.S. Patent and Trademark Office charges filing fees when you file a trademark application.  Those USPTO filing fees are based on how many International Classes of goods and services your claimed goods and services fall into.  The International Classification system categorizes all conceivable goods and services into 45 separate Classes – a very general breakout of what falls within each Class can be found HERE.

USPTO filing fees vary depending upon how idiosyncratic your descriptions of the goods and services need to be.  If you are willing to use fairly generic pre-approved wording for the descriptions (and meet other requirements for your application), you can limit your filing fees to $275 for each International Class your goods and services fall into.  If for some reason accurately describing your goods or services requires more customized wording, the USPTO will charge $325 per Class in filing fees.

In my experience, for most bands the most important services to cover in a trademark application (in order of decreasing importance) are: 

Ÿ  Live entertainment services (which fall into International Class 41);

Ÿ  Recorded music in various formats (which falls into International Class 9); 

Ÿ  Clothing bearing the band’s name and/or logo (which falls into International Class 25); and

Ÿ  Printed goods such as posters, stickers and event programs (which fall into International Class 16).

As you can see, filing fees can add up quickly.  Covering just the above four Classes in your application will amount to $1,100 in filing fees charged by the USPTO.  This means that you’ll want to think carefully about what’s most important to cover in light of your band’s finances.  Perhaps your budget only allows for one or two Classes, in which case I would opt for the first one or two categories above. 

Do You Need an Attorney?

If you hire an attorney to file and prosecute your trademark application, that attorney also will charge separate professional fees for those services.  Why go to that expense, you may ask yourself.

Hiring an attorney who is experienced in the practice of trademark law is not an absolute necessity for the registration of your mark with the USPTO.  But an experienced practitioner knows how to prepare an application and deal with the USPTO examiner in a way that helps ensure that the resulting registration will give you with the broadest rights possible.  Is it worth the money?  You bet it is.

File Right Away

The USPTO will accept your application right away, you don’t need to begin using the band name before you file your application as long as you can assert that you have a bona fide intent to use the name.  In fact, it’s best to file sooner rather than later.  Every day that goes by is a day someone else could file an application that blocks your registration.

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Names are a touchy subject with bands.  Finding a good band name that everyone can agree on, and that is available for your use, is no picnic.  Bands have broken up over lesser issues.  That provides all the more reason to do things the right way when choosing your band name, and to take the steps to keep your name proprietary, once you finally find it. 

After much discussion and consideration, this band settled on the name - wait for it - "Amazing Grace."

Finding a Good Name Is More Difficult Than Ever

It has been widely reported that “all the good band names are taken.”   No less an authority than John Paul Jones (formerly the bassist and keyboardist for Led Zeppelin, now with the supergroup Them Crooked Vultures) has lamented in print, “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.”

It used to be easier to find a good band name, assuming you were a local act with no superstar ambitions.  If a name you liked was already being used by another small act in some distant location, there was no problem.  This is because the chances were good that the two bands would never encounter one another, nor one another’s fan base.

You really cannot depend on that kind of coexistence any longer, however.  When virtually every band has a MySpace page, a Facebook page or a website (or all three), it becomes more difficult to argue that such a thing as “separate territories” exists.  Anyone can access those sites from anywhere and be exposed to the band and its music. 

Verily, as the Internet giveth, so the Internet taketh away. 

Search Your Band Name

For this reason, when you are choosing a new band name, it’s important to search the name to ensure no one else is using it in a way that might result in an infringement challenge.  This doesn’t mean it has to be a name that no one else is using for any goods or services – merely that the public won’t mistakenly believe there is some connection between your use and the use anyone else is making.

So, how do you search names?  First, you should be doing your own online checks as you go along with the name consideration process.  Like John Paul Jones, you should be checking potential names through Google, Facebook, MySpace, Sonicbids.com, Pitchfork.com, AllMusic.com, and any other music site you can think of.  There also are dedicated band name databases that are worth checking.

When searching, focus on the key words in your proposed name.  Ignore any differences created by generic buzz words like “the” and “band.”  Are there a number of bands coexisting with the same key word but combining it with other distinctive words?  Calling yourself “The Kiss” isn’t going to keep Gene Simmons from suing you, but “Kiss My Grits” might.

If you find a potentially conflicting band name on any of these sites, investigate further.  Mere difference in types of music is not a good basis to assume it’s safe to go ahead with use of the name, but it may be another story if the other band is defunct.  So is the band still in existence, or did it release one album in 1989 and then disappear?  Or was it last heard from a year ago?  All of these may mean different things in terms of the assessed risk level.

It’s Worth Talking To An Attorney

Once you find a name that passes your own search test, it’s a good idea to share and discuss your results with an attorney experienced in trademark law.  It’s also a very good idea to have him or her conduct a more detailed search that includes registered marks. 

There are many reasons why an attorney search is highly recommended.  Among them is this: your trademark counsel will have a better sense of what’s a problem in non-musical goods and services.  For reasons that will be more apparent in the next installment, that insight can be very important.

PHOTO COURTESY OF FLICKR USER CONNER395, UNDER THIS CREATIVE COMMONS LICENSE.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts.

My more recent posts discussed the value of filing trademark applications and registering appropriate domain names to reserve your narrowed list of name candidates.  The most recent installment discussed two steps: brand rollout and monitoring the marketplace for infringements.

We now come to the final step on my list: maintaining your trademark and domain name registrations, so that they do not expire or get cancelled. 

Failing to plan ahead for renewals is asking for disaster.

Step 11:  Maintain and Renew Registrations For Your Name

If you have gone to the cost and effort to stake out trademark and domain name registrations for your brand name, it only makes sense that you will want to keep them in place.  These registrations provide you with important safeguards against encroachment by competitors.  You should make concrete plans now, at the time of brand rollout, to take the necessary maintenance steps. 

Trademark Renewal

Unlike some other types of intellectual property protection, trademark rights can last forever provided you make continuous use of your marks and enforce them against infringers.  Trademark registrations also can be perpetual, but you must take the necessary steps to keep those registrations in force.

If you want to keep your U.S. Trademark Registration alive, you must make periodic filings with the USPTO to prove that the mark in question is still in use (and still used in the same form as it was registered.)  If you don’t make these filings, depending on the point in your registration’s life, it will be cancelled automatically or simply expire.  Your trademark practitioner can assist you in making the necessary filings on a timely basis, but ultimately it’s up to you to make certain the mark remains in ongoing use and that the registration is maintained.

Cancellation or expiration of your trademark registration doesn’t mean you lose all rights in your mark.  If the mark has been in continuous use on your product and remains in use, you still will have common law rights.  But the protections you can leverage using common law rights are far inferior to those provided by a U.S. Trademark Registration.  If the U.S. Registration for your mark expires or is cancelled, my best advice is to file a new application to register the mark as soon as possible. 

Domain Name Renewal

As with trademarks, domain name registrations cover a fixed period of time and will eventually “die” if you fail to renew them.  (One important difference is that with domain names, you can determine the length of your registration and pay registration fees accordingly; with trademarks the maintenance and renewal periods are fixed and uniform.)

If you build your brand into a valuable commodity, then the corresponding domain name will be an equally valuable piece of property.  You can bet there will be opportunistic parties waiting around for you to fall asleep at the switch and let your valuable domain registration die.  Indeed, there is an entire industry built around “snatching” expired domain names. 

SOMEBODY needs to keep their eye on the ball.

Make certain SOMEBODY in your organization stays alert to upcoming renewal and maintenance deadlines.

Your Assets, Your Responsibility

You should create within your brand organization a job function responsible for calendaring, tracking and renewing trademark and domain name registrations.  Because these events often take place years in the future, this responsibility should be bestowed on a particular job title, not a particular person.  Individual people may come and go, but job titles (and their responsibilities) remain.

You can in many cases outsource these responsibilities, but I recommend keeping your own calendar of upcoming renewals as well.  Bear in mind that if someone else fails to take the necessary actions, you are the one who will feel the loss of rights.  Any law suit you could bring against your failed “watchman” would be small comfort – money damages are a poor substitute for the value of your lost rights.  Ultimately, these are your assets and you should assume ultimate responsibility for keeping them safely registered.

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Choosing and implementing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I’ll walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts. 

My most recent posts discussed the value of filing trademark applications and registering appropriate domain names to reserve your narrowed list of name candidates.  The next steps are big ones, and they go hand-in-hand with one another. 

...And away we go!!! Brand rollout is an exciting event, no?

Step 9:  Rollout Your New Brand

The last thing you want is a last-minute snag related to your brand name that delays or prevents your scheduled roll out of the new product or service.  But if you have followed the steps recommended in the preceding posts in this series, and paid close attention to your attorney’s advice and recommendations, the way should now be clear for your rollout!

Brand rollout can be within the narrower confines of a test market, or as often occurs, an introduction of your brand to the consumer world at large.  Either way, rollout is a science in itself, and I am not an expert in the planning, preparations, tactical decisions, timing and related issues that form the process.   Those are the realm of the marketer.  There are resources and firms available, however, if you want to educate yourself or engage assistance.

One trademark-related point here:  if you have filed your trademark applications on an “intent-to-use” basis, you need not wait for the registrations to issue before rolling out your product.  In fact, you’ll need to demonstrate that you’ve begun actual use in real-life commerce before your registrations CAN issue.

 Brand rollout is an exhilarating moment.  You are unleashing your creation at last, upon a waiting world!  Of course, there are responsibilities that flow from this exciting prospect. 

Careful policing leaves your brand as sturdy as a brick.. uh, whatever.

Step 10:  Monitor the Marketplace and Police Against Infringements

Just getting your product or service to the marketplace is not the end of the road.  You’ll need to monitor the marketplace on an ongoing basis, watching for the use of confusingly similar names by your competitors.  Brand rollout is a particularly sensitive time in this regard, but the obligation extends throughout the life of your brand.

When an infringement appears, you must be diligent about taking action to enforce your rights and stop the infringing use.  If you fail to do so, you run the risk of losing your exclusive rights in the brand.

Here again is a place where your experienced trademark practitioner can be of great assistance.  If you would prefer to focus your time and efforts on actually doing business, your attorney can connect you with firms that will monitor the marketplace, the Internet and the U.S. Patent and Trademark Office on your behalf, watching for potentially infringing marks. 

It’s also been my experience that as a brand’s following grows, loyal purchasers can be a useful source of marketplace intelligence.  I’ve often learned about a previously-unknown infringement from an indignant brand loyalist.

Your attorney also can and should prepare any challenge or “cease and desist” letters you send out to infringers.  An ill-considered or badly written challenge letter can whip around on you and actually create legal issues for your own brand.  Such letters require careful investigation and preparation, in order to maximize their effect and minimize your own risk.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts

My most recent post discussed the value of filing trademark applications to reserve your narrowed list of name candidates.  The next step goes hand-in-hand with filing trademark applications.

Don't forget to reserve your own little piece of the World Wide Web...

Step 7:  Register Domain Names Covering Your Top Candidates

Just as filing trademark applications help to reserve your list of top name candidates for use on your product or service, registering domain names is an important step because it reserves your top names for Internet use.  In fact, because the cost for registering domain names is so much lower than that for filing trademark applications, you may want to take this step very early in the brand selection process. 

Is Your Domain of Choice Available?

It stands to reason that a consistent and intuitive online presence is an indispensible part of brand-building.  Obviously, for that reason, it is best if you can register [YOUR BRAND NAME].com as your primary domain name. 

It is quite possible, of course, that your preferred domain will not be available because someone else has registered it.  I can’t resist recalling here the satirical TV commercial done by Saturday Night Live, in which a staid and conservative investment firm admits it took its time before venturing an Internet presence, and then had to settle for the only remaining available domain name: “clownpenis.fart.”

Unlike SNL’s fictitious investment firm, you have some choices.

First, given the importance of a good and intuitive domain name, it’s entirely possible that at this stage of proceedings the unavailability of your top domain name choice may be a reason to scrap the brand candidate in question and move on to other candidates.  If so, problem solved.

If you want to stick with the name candidate, you can attempt to purchase the domain from whomever registered it.  Obviously the price for the purchase of such a domain (assuming the domain registrant is willing to sell) can vary wildly, depending on what use has been made of the domain.  You probably will want to employ an attorney experienced in these matters to approach the domain registrant on your behalf, negotiate the purchase, and take care of the details of the assignment.

Another option is to choose a primary domain that adds other intuitive wording, for example [YOUR BRAND NAME]chocolates.com – assuming, of course, that your product is chocolates.  Even if your original choice was available, you may want to register this and similar domains and redirect them to your primary domain site. 

How Much Territory?

This raises the important strategic issue of how much domain “territory” to stake out around your primary domain.  Registering similar and related domain names allows you to redirect to your main site anyone who mistakenly or intentionally navigates to the different domains.  It also allows you to keep others from “cozying up” to your brand, online. 

In this spirit, it’s rather common for companies to register (if available) the corresponding top-level domains – the .net, .org, .biz, .info domain names corresponding to their brand names.  Some companies also register misspellings of their key domain names, in order to reel in web surfers who dropped out of the spelling bees early as children.  There’s even a misspelled domain name generator available online, to make this process easier.

Some companies even seek to control brand image by registering corresponding domains that suggest negative or critical comment on the brand in question.  These include so-called “sucks” domains (i.e., [YOUR BRAND NAME]sucks.com).  Obviously you can’t think of every possible permutation here, and even if you could you wouldn’t be able to register them all.

In the end, the amount of territory you stake out will probably be determined by a number of factors.  These factors no doubt will include a) your budget, b) the number of name candidates on your “short list,” c) the level of online exposure you envision for the brand, and d) your sensitivity to third party encroachment and criticism.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts.

The next step is an important one, because it helps to reserve your narrowed list of candidates for your use once a decision is made.

Be prepared... file early with the feds.

Step 7:  File Trademark Applications to Protect Your New Brand

Filing one or more trademark applications to protect your new brand is an important part of the process.  You can use a mark and even develop limited rights in it on an unregistered basis, of course.  But the breadth of your rights, and your ability to enforce those rights, increase greatly when your mark is registered with the U.S. Patent and Trademark Office.  (State trademark registrations, while cheaper, usually offer little or no actual protection and thus I usually do not recommend them.)

If you have a logo version of your mark, you should strongly consider filing applications to register both the “word” version and the “logo” version.  Registering only the logo version will only cover the brand when used in that specific (basically, that identical) logo version.  We all know that logos have a way of changing over time, and you run the risk that eventually your registration no longer will cover the “evolved” logo.  The “word” registration will cover your mark in any format, including in any graphic logo format.  By registering the word format also you ensure that you will have consistent coverage of the brand, even if you eventually need to register a new logo version.

ITU Applications Let You File Early

You can file applications to register your new brand on a so-called “intent-to-use” basis, which I compare to taking a number for service at the deli counter.  Such “ITU” applications can be filed as long as you have a bona fide intent to use the mark. 

By filing an ITU application, your priority is locked-in so that your rights will be superior to those of others who may file or even begin use after you.  You will need to begin actual use of the mark before the actual trademark registration can issue, but an ITU application lets you get your foot in the door, as it were.

File For Several Candidates, Just in Case

It’s not unusual for a company to file applications covering several of potential name candidates relatively early in the name selection process, and then let the applications for the “losing” candidates go abandoned once a final selection is made.  This allows the applicant to get the earliest possible priority date by filing the applications early, and still hedge its bets on the final choice.  Generally the “bona fide intent to use” requirement is regarded as satisfied if the applicant has a demonstrable intent to use the mark as one of a relatively limited number of alternatives.

Registering your trademark with the USPTO effectively “reserves” the entire country for you to expand your use, even if you haven’t yet reached national distribution.  Registered marks also appear more prominently in availability searches conducted by other attorneys, so your registration will serve as a strong discouragement to others adopting confusingly similar marks.  Owning a registration for your mark usually makes it easier to litigate and to prevail against an infringer, should a challenge become necessary.

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Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I’ll walk you through the most important of those factors.

Didn't search your mark? Remember to dress nicely for court.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested.  The next step is one that I cannot recommend strongly enough:

Step 6:  Have Your Trademark Candidates Searched

It is always a good idea to have a trademark search conducted before adopting any mark, to determine whether it is available for your use and registration.  Basically, you need to determine whether anyone else is using the same mark or a confusingly similar mark, for the same or related goods or services, and whether anyone else has registered or filed an application to register the mark.

Here is where an attorney experienced in the practice of trademark law can be of great value to you.  That attorney can obtain the necessary searches for you, evaluate the search results, and provide you with an analysis of the marks’ availability and registrability.

Search Early, When It’s Easy to Start Over

For obvious reasons, it is best to do this as early as possible, before you spend money on implementing or advertising the mark you’re interested in using.  That way, if the search identifies a problem with the mark, you will not have wasted time, money and effort on an unusable mark.  Also, your ranked list of candidates will allow your attorney to move efficiently through the list in case your top preferences are unavailable.

Failure to Search Invites Disaster

It’s almost impossible to overstate the importance of having your mark(s) searched.  If you don’t consumer test your names, you may end up with a brand name to which consumers don’t react as well as you had hoped.  Not good, but something you can work over time to fix.

On the other hand, if you fail to search your mark for availability and registrability, the potential downside is much, much worse.  If you blunder into a conflict with someone already using your mark, you could find your product or service almost instantaneously pulled from the market, by order of a federal judge.  How’s that for a full-stop on your product launch?

After I posted a link to this article on another forum, a perceptive reader commented that not searching a trademark is like playing Russian roulette.  He was right – in fact, it’s like playing the game with a gun that can still blow your brains out a week, a month, six months, even a year after you pull the trigger.  You never know when an infringement challenge is going to come out of the woodwork.

When going through the search process, you should bear in mind that with the proliferation of brands, products and services on today’s market a trademark can almost never be assessed as an absolute no-risk green light.  Usually an attorney issuing a trademark opinion will structure it as an assessment of the level of risk in proceeding with the name.  Taking that risk assessment into account, you the marketer can decide whether you want to accept the risk level and move forward.

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