The small business owner sat down across from trademark attorney Leah Halpert and told a familiar story.
She owned a business in the health and wellness industry. She had invested several thousand dollars to build its brand identity, including the logo and name. She’d also performed a clearance search before settling on the company name, looking for names identical to theirs in their area of business.
She came to Halpert’s office that day because she’d recently received a cease and desist letter from a national soap company with a similar name to her business. She needed advice regarding what options she had to keep her name.
Sadly, she couldn’t afford what would have been a long and costly legal battle to keep her name. She had to rebrand her whole business.
“All of that time and money she put into her marketing campaigns, social media, newspaper ads, were wasted,” Halpert recalled. “And, she had to spend an extreme amount of money to tell her customers, ‘We’re now this new company, so look for us.’ All because of this soap company that was arguably different, but whose name and logo were similar enough to cause confusion, which is the legal standard.”
Learn the steps that can help you avoid trouble
As you consider your brand marketing strategy, consider this small business owner’s situation a cautionary tale. Halpert advises any small business owner to take steps to trademark their business name and logo, thus avoiding finding themselves in a similar predicament.
“You do not want to go in and start spending all this money developing your brand and building your reputation only to have somebody come after you later and say, you’re infringing on my rights,” Halpert said.
“Starting off this process with a comprehensive clearance search when developing a new brand is an incredibly important step to keep in mind to make sure you’re starting off on the right foot and your money is well-spent.”
You don’t just want to avoid infringing on someone else’s trademark. Once you’ve created your brand, you also want to protect your rights. “You want to keep your new mark distinctive and unique in your field,” she said.
Here are the steps that a trademark attorney can walk you through to ensure that you protect your business name and logo and don’t run into trademark issues when creating your brand identity.
Step 1: Perform a comprehensive national search for similar brand names and logos.
While working with a brand developer (like Fab Brands) to develop your company name and design a fabulous logo, you should also be consulting a professional trademark lawyer who can ensure both will withstand any challenge from other businesses.
A comprehensive search will find not only exact matches to your brand name and image, but also those that meet the legal standard of “confusing similarity.” This standard involves branding that would likely cause confusion amongst consumers.
One of the most famous cases involved the World Wildlife Fund successfully suing the World Wrestling Federation over the use of the WWF acronym, forcing the wrestling organization to change its name to World Wrestling Entertainment after many years using its former name.
Undoubtedly, this decision cost the WWE hundreds of millions of dollars to change its name and logo across all its advertising and marketing materials worldwide.
With many businesses now marketing their goods and services on the internet, this search takes on added importance. A microbrewery in Portland might brand a new ale and advertise it on their website, not knowing that another microbrewery in Manchester, New Hampshire, trademarked that name for a similar ale.
“They can prevent you in your small region from using your mark,” Halpert explained. “Or you could go through a prolonged legal battle just to get the right to use your mark in your small area without ever expanding.”
Step 2: Register your company name and logo with the U.S. Patent and Trademark Office.
Now that your attorney and branding team have determined that your branding is unique, you’ll want to protect it as your own. A trademark attorney can help you file an application with the U.S. Patent and Trademark Office (USPTO) to register your company name and logo, giving you exclusive rights to use them in your business category.
“If you haven’t registered your mark, you can lose a lot of your rights and have to go through the rebranding process, which is just awful,” Halpert said. “As devastating as rebranding is, though, it’s usually the cheaper option to court cases and having to fight other companies coming in using similar names after the fact.”
Step 3: Monitoring your brand and protecting your business name and logo.
Did you know that aspirin and escalator used to be trademarked brands? They and many other brand names lost their trademark status for assorted reasons. Not having a trademark lawyer help you protect your exclusive use of your name and logo is one of the most common.
“You can stop other people from using something that’s substantially similar and likely to cause confusion,” Halpert said. “You want to maintain those rights and keep your brand from becoming indistinct.”
This process involves monitoring trademark office filings and what’s being used on the internet and common usage without being filed.
“Trademarks and brands are not just a fancy logo. It’s your entire business reputation,” Halpert said. “Everything you invest in building your reputation is encompassed in there. People look at your logo, your company name, and they think about who you are as a business. People put a lot of trust and identity in these trademarks, and it just makes sense to protect that investment.”
By following these three steps, you can trademark your business name and logo and protect your brand identity as your own.
Work with a trademark attorney to avoid missteps during the branding process.
Yes, it’s possible to perform internet trademark searches and file your application with the USPTO. However, the process involves many minute details that are easy to miss — any of which could lead to trouble down the road.
Fab Brands is happy to team with Halpert — who opened her trademark law firm in June 2017 — and recommends this experienced trademark attorney well-versed in the issues that small businesses face when branding their company. Hiring a trademark attorney who specializes specifically in the field of trademarks and working with the trademark office will be a great benefit and reduce any risks coming down the line.
“Trademark law is a complex field of law,” Halpert said. “You really can run the risk of doing things incorrectly. One of the biggest things I see is people coming to me after filing an application, but they didn’t run a complete clearance search. What is considered confusing similarity is a complex legal standard.”
Unlike many attorneys, Halpert offers businesses a flat fee for her services. She offers a complete package that encompasses all three steps — researching your proposed brand, filing with the USPTO, and setting up monitoring of your new registration — or a la carte pricing for any of these services.
Working with a trademark attorney like Leah Halpert does involve a small upfront cost. However, it can save you thousands of dollars in headaches down the road. It’s an investment well worth your money as you embark upon your brand development journey. Let’s talk about getting started today!