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Trademark Registration: What Happens When You Skip It

by Arianne Foulks

April 1, 2014
learn the ins and outs of trademark registration

Have you considered going through the trademark registration process? Our web design studio once had a client get all the way to launching her new site when she discovered that a business in her field was using a name so similar to hers that she didn’t feel comfortable going ahead, and we ended up helping her redesign.

I know that this is the kind of thing that seems like it couldn’t happen to you, so I wanted to share two stories from small business owners, so you can see how real this is. Sometimes when you start small, you feel like what you do won’t ever matter on the grand scale, but if you have any hopes and dreams for your business, you should start it off on solid footing.

Being One of Many

This example was the first time we really had to redo everything from scratch. Our client had a business selling children’s toys and decor, and she’d chosen a name that was not too unusual. Let’s call her Jane and let’s say her original business name was Little Leaf. It was definitely a cute name for a kids’ shop, and she did search online to see if anyone had a website with that name. It looked safe to use, but then she went to her first trade show, and says:

“Turns out there were lots of stores with our name even if they didn’t have a website. At our first trade show, we were one of 5 that had similar names. I still have people shipping my goods to a store in Chicago, even though we changed our name over a year ago and launched with the new name. First impressions are important, even just logistically.”

We had already made good progress on Jane’s Little Leaf logo, and we were using some natural budding and sprouting graphics in it. She decided to start over after the trade show, and we worked to brainstorm a new business name for her. The new name is unique, memorable, and not being used by anyone else, thank goodness! However, the name itself was so different from Little Leaf that it didn’t make sense to try to modify the logo design – it deserved its own design. We began again.

Jane is very happy with what she has now, and her identity is much stronger with the new name, but it’s a shame she had all the extra trouble and expense at the beginning of building her business.

 Too Close For Comfort

Almost a year later, a second client had a similar problem, and sadly we had made it all the way through branding her business and creating her website. Let’s call this client Emily, and call her bakery My Muffin Top. We launched her new website last month and she emailed me a week or two after the launch, saying:

“It feels a bit surreal to be writing you about this just after went live. Tonight, as I was reading over the information on the SEO plugin and looking around on Google, an online search found the website Back when I was brainstorming business names, I did the requisite Google searches, and they didn’t turn up this website or anything else that seemed to be similar. From my research, it looks like Muffin Top Bakery launched shortly after I registered my domain. Unfortunately, my later web searches didn’t turn up the site, either.”

The two businesses had different business models, but the target audience was the same, and the names were way too close for comfort. Emily found out that some of her Twitter followers also followed this other business, and there wasn’t really a way to coexist peacefully using such similar names. It wasn’t anyone’s fault, and it made sense for Emily to change her name before any problems arose.

“I did read your blog post about trademarking shortly after I began working with you and the rest of the team, and my father, who’s an accountant, had mentioned that I should do that, but I’m sorry to say that it fell to the bottom of my list of priorities. I also did a trademark search on fairly recently, but didn’t find anything. I’ve been feeling so awful about this. It’s certainly better that this happened now rather than later, but it definitely wasn’t something I wanted to deal with. At least I know you and the rest of the folks at Aeolidia can help!”

The Risks of Ignoring Trademark Registration

Luckily, neither of our clients got far along enough with their business name to receive a dreaded Cease & Desist letter from another shop’s attorney, but that is something that can happen.

The alarming thing here is that you can do a web search, feel like you’re in the clear, and then discover businesses that either don’t have a website, or were working on a website at the time that you started your business.

Even if you consider yourself a “local business,” if you advertise online, you need to be sure that your name doesn’t conflict with existing businesses in the same niche. Trademark law is used in any situation where customers could be confused about which is the “real” Baby Bee. This means that a Baby Bee daycare and a Baby Bee bakery, even if both in the same city, would usually not have a complaint with each other. However, a Baby Bees clothing shop in Michigan could challenge a Baby Bee clothes and toy store in California if they felt they were losing customers due to confusion about the website URL or anything else.

Trademarking and the Aeolidia design process

We have been referring clients to a trademark attorney for a few years. It is such a relief to be asking all of our clients upfront if they’ve trademarked their business name and be able to offer them the research that determines if their name is safe to use, and then the trademarking service that will protect them if anyone new decides to use it.

We have been fitting the two-day research process in before we begin logo design work, and we can all feel more confident that the name and logo will stand the test of time.

What should you do about trademark registration?

If your business has a name that hasn’t been trademarked, please get in touch with a trademark attorney! If you don’t have one in mind (and your business is based in the US), email me, and we can refer you to an attorney.

Originally posted on Oh My! Handmade »

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1 thought on “Trademark Registration: What Happens When You Skip It”

  1. Thank you for posting this! As a trademark attorney, I am so appreciative when other businesses confirm what I try to beat into peoples heads: DO YOUR TM CLEARANCE UP FRONT. I’ll be directing some of my clients this way for a reinforcement!


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