Trademarks: Register or Rebrand

January 31, 2017 by Leave a Comment

WordPress Swag by Caspar Hübinger from Flickr (Creative Commons License)

One of my entrepreneur friends recently asked me if he “had to” register the logo for his company. I responded with, “How much would it suck if you had to rebrand?”

Why Register your Trademark
Your trademark is the name, logo, and other branding you put on your products so consumers can tell the difference between your brand and your competition’s. When you have a registered trademark for your brand, you can stop anyone from entering the market with a similar brand on a similar product as you. The law doesn’t like it when your competition tries to ride your coattails by looking too similar to your brand. When you register your trademark, your rights extend to everywhere in the United States, even if you’re not doing business everywhere in the country yet.

If you don’t register your brand, you can only get “common law” trademark rights that are limited to where you’re doing business with your mark. Your competition can use the same or similar brand where you haven’t established yourself. And if they register the brand before you, you may find yourself frozen only to your established marketplace, which may be quite small. Just ask the original Burger King restaurant what that’s like.

Cheaper than Rebranding
What does it cost to have a logo designed?
What about a website?

The fee to submit a trademark application to the U.S. Patent and Trademark Office (USPTO) is $225-400, if it’s only for one type of product or service. Even with the fee to have a proper trademark lawyer submit and track the application, it’s often cheaper to apply for a registered trademark instead of rebrand. If someone else registers your trademark before you, you may be forced to rebrand if you want to continue to grow your business and expand your marketplace to reach more potential customers.

Brand Theft Happens
I have seen and worked on a number of situations where a company could have avoided a lot of heartache and legal bills if they had registered their trademark, because their competition registered the same or similar trademark before they did. Turner Barr essentially had his trademark, Around the World in 80 Jobs, stolen out from under him. He had to cease operations to address the situation. Thankfully for him, his story had a happy ending. Other companies are not as lucky.

A substantial portion of my work involves analyzing, registering, and challenging trademarks. If you need help with your trademark situation, you can contact me directly. I also post about these issues on Twitter, Facebook, YouTube, and LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Filed Under: Intellectual Property Tagged With: , , , , , , , , , , , ,

Trademark Registration Workshop for Bloggers

July 30, 2015 by Leave a Comment
The Anxious Type by JD Hancock from Flickr (Creative Commons License)

The Anxious Type by JD Hancock from Flickr (Creative Commons License)

I’ve been on my soapbox for a while about the importance of registering your trademark if you have a blog. Even if your following is small, you want to stake a claim to your site’s name because if someone registers your name before you, they can essentially shut down your site. If they register your name as a trademark after you’ve started your site, you don’t have to shut down your site, but you can’t grow you market.

This is not a new problem but it is getting more complicated in the online world. The most infamous trademark story I know in the brick-and-mortar world is about two different Burger King restaurants. The most infamous situation in the blogosphere is the Turner Barr situation:

When I speak at social media and blogging conferences, I encourage everyone who has a blog to register their site’s trademark with the U.S. Patent and Trademark Office (USPTO). (Ditto for vlogs and podcasts.) A lot of people agree that it’s a good idea; however most people don’t follow through and do it.

The #1 reason I hear why most people don’t register their trademark: the cost.

I’m not going to lie. Registering a trademark is expensive. The filing fee alone is at least $225. But what would suck more – paying for a trademark or having to rebrand because someone else registered it – especially if your plans include making money off your site?

I am almost through the process of registering the trademark for my blog, The Undeniable Ruth. It’s got me thinking that I could do small workshops with bloggers (3-5 participants) that includes an overview of trademarks and then I could lead them through the process of filling out the USPTO trademark application during the session, and then shepherd their applications through the rest of the process. Since it would be in a group setting, I could charge half the price of what I’d normally charge to submit an application for a client (only $499 instead of $1,000).

If you want to know more about the legalities of blogging, please watch my Q&A keynote from TechPhx or check out my book The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed.  You can also contact me directly or connect with me on Twitter, Facebook, YouTube, or LinkedIn.

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Bloggers & Vloggers: Register your Trademarks!

February 3, 2015 by 4 Comments
Registered by tup wanders from Flickr (Creative Commons License)

Registered by tup wanders from Flickr (Creative Commons License)

Ever since I heard about the Turner Barr story in 2013, I’ve been on everyone I know – including recreational bloggers and the vloggers – to register their trademarks in at least their sites’ names with the U.S. Patent and Trademark Office (USPTO). If this isn’t on your to-do list for this year, take a break from reading this post and go add it right now.

For those of you who don’t know or don’t remember, Turner Barr started an awesome blog called Around the World in 80 Jobs where he writes and creates videos about his travel adventurers and how he works from place to place. It was a simple but brilliant idea. He didn’t register his trademark. I bet the thought never crossed his mind. I bet he never thought that another company would register the trademark “Around the World in 80 Jobs” and essentially shut down his site. Thankfully, Turner was able to resolve the situation in part by publicly calling out the people he suspected stole his idea. He has since registered the trademark for his blog.

When I saw this situation where it looked like another company ripped off an individual blogger’s idea and name for themselves and basically (temporarily) stole it out from under him by registering the trademark, I became scared for every person I know who has an amazing blog or vlog. I don’t want to see them in the same predicament. It also reminded me to be a diligent about reminding and re-reminding my clients who are startup entrepreneurs about the importance or registering their trademarks so they don’t end up in the Burger King situation.

This is the type of situation potentially where someone can steal your idea and you will have to fight to try to get it back. And it’s the type of situation that is easily prevented by registering your trademark first. Once you have a registered trademark with the USPTO, you can stop other people and companies from using a name that is confusingly similar to yours in your industry.

Compared to the heartache, headaches, and what you will pay a lawyer if you end up in a situation like Turner Barr did, filing at trademark application is cheap. The USPTO recently lowered their filing fees so if you did your application yourself (which I don’t recommend) it may cost you only $275. If you’ve never filed the trademark application before, I suggest you at least consult a trademark attorney in advance just so you understand the trademark process including what information you have to give the examining attorney to prove that you’re using your trademark. It may not be as expensive as you fear.

And just to show that I put my money were my mouth is and that the shoemaker’s children have shoes in this situation, I recently submitted a trademark application myself for my personal blog, The Undeniable Ruth. I want to be able to call myself “undeniable” for the rest of my life and this is the first step to ensuring that.

If you have questions or want to talk about your trademark needs, feel free to connect with me on Twitter, Facebook, LinkedIn, or you can send me an email.

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