5 Essential Tips for Professionally Trademarking Your Startup
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“An image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a studiously crafted personality profile of an individual, institution, corporation, product or service.”
– Daniel J. Boorstin, U.S. historian
Once upon a time, a marketing guru came up with the bright idea to relaunch the Sci-Fi Channel’s brand – to something dynamic, modern, catchy (keep that in mind – that’s where the joke’s coming…), and memorable. It’s certainly catchy – 100% catchy. Why? The new brand name was SyFY, which, on the face of it is ok, until you factor in that it’s the most popular way of referring to syphilis (yes, that syphilis) by our more youthful generations in a text message.
Oh… And the thing is, the Sci-Fi Channel (or SyFy, to be more correct) are not the only ones to step in something of canine origin and highly unpleasant on the sidewalk of marketing life. “Branding disasters” appear to be as contagious as the aforementioned STD – just type that phrase into everybody’s favorite search engine, and you’ll be treated to some quite spectacular (and very costly) errors of judgement. And that, dear reader, is why trademarks are so important.
My name is David N. Sharifi, and I’m a L.A trademark law attorney, focusing particularly on entertainment law, emerging technologies, federal trademark registration, and the “Internet of Things”. Any plaudits? Oh, yes. I’ve been recognized as one of the “Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law” by the Los Angeles Business Journal, so I’m speaking from a highly professional perspective.
Trademarks are your business’s identity, your brand, and your logo within the marketplace – it’s how each of your customers, and the rest of the world, knows it’s you. It doesn’t get more important than that. Achieve an instantly recognisable trademark (Nike and Coke, to name but two), and the world is your oyster. Mess with it, and your future could well turn out to be a clam, or at least the butt of thousands of internet jokes, mostly made by existing and potential customers, as SyFy found out very, very quickly (social media can indeed be a harsh mistress).
Choosing, registering and protecting your trademark, both in the U.S. and/or internationally, is a vital and strategic part of any new business entity or startup – failure to do so will just present your entrepreneurial journey with more urban landmines than you can avoid. If you’re on the verge of, or have recently launched your startup, this article is for you, and you should definitely read it. Now.
Trademark Choice: Name It Wisely
In a nutshell, what you’re aiming for when choosing your trademark is 100% uniqueness, just one or two words, easy to understand, and easy to identify. You’d think that would be easy, wouldn’t you? Once you and your team have decided on a possible trademark name, you need to ensure that it exists absolutely nowhere else at all. The sheer importance of this step in the trademark name selection process cannot be underestimated – what you decide now could, at some point in the future, be the end of your business. The absolute end of your business. Seriously, Mr. Trademark Attorney? Very seriously, indeed…
If you get this step wrong, that lack of due diligence on your part could easily result in legal challenges, and, ultimately, sizeable legal bills you either can’t pay, or that result in your startup dying there and then. Therefore, it is crucial your trademark is brand new (literally and legally) and exudes 100% uniqueness. Your research, your due diligence, is now key.
Research Your Proposed Trademark… & Then Do It Again
Your starting point, as ever, is your search engine. And then the ones you don’t normally use. Type in your proposed trademark name and check everything. Seriously, everything – something the “marketing guru” at the Sci Fi Channel failed to do when rebranding said business as SyFy. Fail to prepare, and all that… Yes, we’ve also become used to checking only first page results, and the digital world and what it shows us can change in a heartbeat. You simply can’t afford to not be aware of the potential for trademark duplications, and so forth.
There is also a one-stop shop known as Markify, a free trademark search tool that covers the U.S. and Europe, to ensure your new brand name is 100% unique. If all is looking good at that point, now you need to check out the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System. Duplication? Maybe, but remember that phrase “due diligence” – you don’t want to be the victim of a rare error, however rare.
Your Trademark, Your Application
Once you are completely satisfied that your proposed trademark name is as unique as you can possibly make it, and fulfills all the other criteria mentioned above (understandability, and, yes, it’s catchy in a good way), it is time to prepare and then submit your application.
If you are a new U.S. startup, you will need to apply for your trademark with the USPTO previously mentioned. Now, this is extremely important: What many new applicants simply do not know is this – once you file a trademark application with the USPTO, you enter into a legal proceeding with them. Yes, everything concerning your trademark application, and it’s subsequent success in the trademark process is legally binding.
Because of this, many startups use the services of a trademark attorney, (yes, such as myself) to be 100% certain that all the legal requirements of the application have been considered and have then been met.
An example of the legality of the process is this: Your U.S. startup’s trademark application has to show its intended use on a commercial basis, and, importantly, across state lines, which requires the transmission of money and products/services from state to state. Both of these elements to your application are legal requirements.
Additionally, you may very well be required to submit a design or a drawing for your Federal trademark application, and you must strictly adhere to the regulations and guidelines for this that are laid out by the USPTO.
Important: After applying for a U.S. trademark, you only have a maximum of 6 months to apply for the same brand protection abroad (by doing this, that separate application will be backdated to the original U.S. registration date).
The Importance of Legal Advice
Seeking out professional legal advice with regard to applying for, and then protecting your trademark will take a lot of concern you may have away. Let’s face it, launching a startup is a highly involved venture, and having one of the most important aspects of such a launch covered legally can only help you concentrate on the other vital aspects that need to be addressed.
Remember, a trademark is something you need to establish and be recognized for from the outset, and it will certainly be an important business asset that you need to protect in the future. A word to the wise: Just because you have followed the legal rules, sadly, that doesn’t mean possible competitors have acted in the same way.
Rejections & Cancellations
Once your application has been made, the only thing left to do it the proverbial sit and wait. Trademark applications take several months at the best of times to be fully processed. Hopefully, you will have no issues with its processing, but I wouldn’t be offering expert advice without mentioning the two worst case scenarios.
Firstly, the rejected application. Applications can be rejected outright for a number of reasons, but, as long as you have applied due diligence, and a uniqueness to your trademark, and presented your legally-binding application as directed by the relevant authorities, this is unlikely.
Secondly, there’s another worst case scenario in the form of a cancellation. This can occur if, after your application has been processed and your trademark registered, another company begins legal action to have it cancelled. This can normally be done on the grounds that it impinges on their specific rights. Note: You don’t have to have identical trademark names.
For example, if another company is able to prove consumers will be simply confused by two similar names, your registration can be cancelled.
Time To Start…
Startups need to actively plan for the trademark application and registration process, and, if there are unsure on any aspect of this, they should seek legal advice. These 5 essential tips for professionally trademarking your startup – trademark choice, research and due diligence, the actual application, legal advice, and rejections and cancellations – are designed to give you a grounding in the actual process you will enter into when you you submit your application. Furthermore, it’s vitally important for any new startup not just to acknowledge, but to understand fully the legal requirements of a trademark registration.
Do you have any experience of trademark applications? Have you had good or bad experiences with the process? Please feel free to post any questions or comments you have below. However, and this is a little more free startup trademark attorney advice (and that doesn’t happen often), any comment you leave will be in a public forum, so please, please don’t disclose anything of a confidential nature.