What to Trademark

Chaminda Wijetilleke COO at EquityEats

January 28th, 2014

Hi All,
Always have found soliciting founder feedback on questions to be of value. So am hoping to get people's thoughts here. My fellow founder and I going through the process of determining what to trademark. We currently are looking to do our name and our logo. We have understood that our options are:

1- just the logo itself
2 - logo +name
3 - name (in standard characters - giving you the ability to use name  in any stylized way possible and doesn't limit the manner in which it is displayed. This gives you the broadest protection. This seems to be a popular one). 
4 - Name (stylized the way it appears above or however it will appear on your website - If we do 3 we don't need to do 4, but it doesn't hurt to have 4 in addition)

Clearly if money was no object we would just all of them, or 1, 2 and 4. That said, money--as we all know-is an object.

What are folks thoughts/experiences?

Tom Maiaroto Full Stack Consultant

January 28th, 2014

I agree. Trademark the standard character mark if you can. You may not be able to though if your name is too generic or already trademarked. A trademark on a logo design doesn't really protect your name...And you'll likely change your logo over time anyway. 

Though you can try to just go it alone with a trademark on the design. For example, the Lithium platform (Lithium Technologies) has a logo design trademark (a few actually - because remember how I said you'd likely change your logo? They did over the years and re-filed, more $$$, wasted $$$) and they actually threatened the PHP framework Lithium. Clearly they had no case as you can't have a standard character mark on "lithium" ... it's an element, a drug, etc. However, they still made some impact in their situation because let's face it, an open-source framework isn't going to go to court (and they likely figured that). So did it protect them? No, not really because 99% of the population is going to say "lithium" is a drug or an element on the periodic table...And all programmers (especially PHP ones) know that "lithium" is a PHP framework and don't first think of it as some content platform (maybe people in marketing would know it as that first though), so they've already lost and IF they somehow had a standard character mark, they would have failed to protect it. They have their protected logos which is just fine, but no one is copying their poor design anyway. So it doesn't matter. Like I said, wasted money.

I guess my point is to protect something worthwhile and know what you're protecting so that you have good leverage and can do more than just threaten. Don't be the equivalent of a domain squatter or patent troll.

Also understand that it is your duty to then protect your mark. If you don't, you can end up with a situation of "genericide." For example, Google. Google is an example of genericide. They are still trying to protect it, but they might as well stop because the whole world says "Google it" and we all know that means to search on the internet (regardless of search engine). Another good example would be Kleenex. Even if it's not Kleenex brand, people understand what you're asking for and that you really don't care about the brand.

Of course, if you do end up with an ineffective and unenforceable trademark you can always threaten people with frivolous law suits if you want. Nothing really stops you from that, except money...I guess just be prepared to go all the way over something you honestly don't have much control over anyway. If someone wants to say "Google it" there's not a damn thing you're going to be able to do. You can't file a lawsuit against every person on the planet who decides to use your company name incorrectly. Though you can, given more money than God, sue every company that misuses your mark. Though I think one should be flattered and happy to be frank because it means they have a powerful company name.

So my experience is if you really have unique name that you want protected -- get the standard character mark.

One more little fun fact I learned during my own experiences with an actual standard character mark that I own... You can't get domain squatters to give up on the domain (even if they are based in the same country where you have the mark). ICANN doesn't really step in, but there is a service in the US that can TRY to help you. It's expensive though and there's no guarantee. IF the person starts actively using said domain for business though, you then have a better chance in court (and an actual case - the court will NOT hear your domain name woes because our legal system in the US is not setup to protect us there). However, someone acting upon said mark is a very clear problem in the court's eyes. So while you can be certain your product/company is protected from another one cropping up causing confusion (key word, confusion)...You're still SOL for the domain name if it's being squatted.

Don't ya just love our legal system?! It protects the wealthy. Same thing with patents. Completely and utterly broken for software and the internet. More embarrassingly broken than the site. =)

Best of luck. I hope you have a pretty unique name. Oh, also, the lawyers in the USPTO will call you and speak with you to clarify if you don't. Sometimes they have to change the application if you have multiple words to clearly state that no claim is made upon one of those words and it is a claim for the combination of the words.

Also, trademarks are relatively cheap and easy on LegalZoom and work out just fine. It is the defending of them that is going to be problematic if you end up dealing with an arsehole who wants to give you a hard time.

Really, the best thing you can do is increase the awareness of your mark with the masses. Best protection ever.

Robert H Lee

January 28th, 2014

Generally you do 3 because it gives you the broadest protection. Then you do the others when you are more sure you are going to stick those representations and you have more money. Regards, Robert Lee Startup Consultant & Investor at SV Accelerator: Entrepreneur-in-Residence at Stanford: ∩ of Technology & Adventure: @goldspruce, +1.510.427.2049 - California

Mark Neild Empowering quietly creative people to prosper through innovative yet authentic and engaging business models

January 29th, 2014

Chaminda Not sure what territories your business spans and there are regional differences,but... You need to understand the difference between registered (R) and unregistered TM. If you have a phrase that you want to make uniquely yours and in particular use it a lot in Internet keywords and SEO then it may be worth registering bearing in mind that it cannot be a phrase in common usage. You will need to decide how long you are likely to keep using that phrase. The real problem with registering is all the searches you need to do and there is a high chance that somebody has already registered it. In a number of countries the registers are now online so you can do a lot yourself to save money, but you cannot avoid the registration fee. You can trademark TM anything you like without registering it. This gives you some protection against copying but if it comes to court you need to prove that the other party did copy your TM. Realistically how likely is it that someone (outside SE Asia and South America who do not care much about IP) will really copy your Trademarks and if they do, have you got the resources to fight it? Your biggest threat is probably the IPR pirates who make a living from registering stuff to extort money from operating businesses. If you really feel you need protection I would register 2 and TM the rest and think carefully about key phrases to see if you have freedom to register there. If you do TM things, it is worth finding a way to date stamp your TM so that you can prove the date that you first started using it. Far too late to start thinking about that when you first hear about a battle. Hope it helps. Mark


January 29th, 2014

I went with 3 only as well. I find TM search through services such as Reuters a waste of money (though my wife recommends it to her clients - she's a lawyer so she understandably wants to cover her bases), because a search on the USPTO web site will usually give you a good idea if you're likely to get a trademark infringement lawsuit or not.

Also, registering a mark that you don't already use is a bit more expensive and the USPTO Intent-to-Use process is a bit of a hassle IMHO. Make sure you have a web site up and running with some relevant info that shows you're actually using your mark. Note also that the mere fact of using your mark is a protection for you and registering is just an additional safeguard (it's what's called the "first use doctrine" in the legal world, if I'm not wrong).

My personal rule of thumb is that if a domain name is not registered with any extension, it's typically a good sign the mark you've chosen is not yet registered or even used, so that's usually where I start from. I then go to the USPTO web site to search for the exact and close enough marks. In any case, the main criteria for a court of law is whether there is a significant potential for confusion in the mind of the consumer/client/user or not. Factors are similarity in industry, target market and name, of course. So if your TM search on pulls similar marks in the same classes, you're a bit more at risk.

My 2 cents only.

Michael Brill Technology startup exec focused on AI-driven products

January 28th, 2014

If you can only afford one, do #3. You'll probably end up changing your logo anyway!

Igor Borushek

January 28th, 2014

*Sorry I'm not sure what happened to the above post, the form submission cut part of it out. Full post below.

Though there are various benefits to obtaining a trademark, in case you are tight on money at the moment, b
I'm not a lawyer so you should speak with one if this is a sensitive issue.

Grant Moller MBA | PMP | Certified AWS Architect | Entrepreneur

January 29th, 2014

Getting ready to go through this myself. Legal consultation recommended option 3 as you mention. That is what I plan to go with for the same reasons you mention as well; best protection for the least expense.

Tom Maiaroto Full Stack Consultant

January 29th, 2014

Putting "TM" on something doesn't really protect you.

There's no database or handling for it. It's not like some sort of "prior art" and it doesn't matter if you have some sort of way of dating it. If you fail to register and someone else does and the USPTO sees no reason not to grant the mark, you're SOL.  If you CAN'T get the mark (and no one else can either) then you may have other problems here...Are you trying to put "TM" on something that's too similar to another registered mark? Now you could be infringing upon that mark. Is it a generic word? Then that "TM" is meaningless.

Putting TM on something is good if you are in the process of registration to notify others of your intent...Because it takes a long time to issue the registration.

Though I'd seriously talk to a lawyer if you intent to just put "TM" on something and not actually follow up with a proper (R) registration with the USPTO. I just wanted to note that you should not think you'll be "ok" if you just put "TM" on there and call it a day.