Naming Your Small Business…Do You Really Need a Trademark?

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Naming your business is often one of the most important decisions a business owner will make when starting a new business. Whether you plan to market your business worldwide or just within your close-knit community, the name of your business is important because it identifies your company. Your name is what makes you different—it is what your customers use to distinguish you from your competitors.

To understand the importance of a trademark, it is helpful to start with a definition.  A trademark is a symbol, word, or combination of words that act to identify a particular company or product. Take for example the trademark of Apple. Standing alone the word “apple” generally suggests a piece of fruit. However, take that same word and use it in the context of computers and technology.  Suddenly, you think of the company that produces and markets MacBooks, I-Phones and I-Pods. The term Apple is a trademark—it marks the consumer’s brain to think of the products and services Apple offers when when they think about computers and technology. To protect this, Apple trademarked their name with the United States Patent and Trademark Office.

So how does this relate to you? Trademarking is not just critical for companies like Apple…it is a critical step for any business to take, regardless of its size or potential market. To better put it into perspective, lets look at what many have called the “David and Goliath” story of trademark infringement, where a small microbrewery based out of Vermont known as Rockart Brewery learned the hard way just how important a federally registered trademark was to its business. In celebration of its 10th Anniversary, Rockart Brewery introduced to its customers its anniversary brew it had coined “THE VERMONSTER.” Although it had successfully sought a state-issued trademark from Vermont in 2006, Rockart Brewery never bothered to seek a federally registered trademark for the name of its new brew.  The problem—Monster Energy drinks.

In recent years, the market for energy drinks has gown exponentially.  One such company that has taken hold of this rapidly growing market is the billion-dollar corporate giant known as Hansen Naturals of California, the maker of Monster Energy drink. Given the success of the Monster Energy drink, Hansen Naturals has undertaken extensive and aggressive steps to protect use of its trademark Monster Energy. So in 2009 Hansen Naturals felt it necessary to serve a cease and desist order on Rockart Brewery claiming trademark infringement for its use of THE VERMONSTER name because it was confusingly similar to Monster Energy drinks. This meant unless Rockart Brewery pulled THE VERMONSTER off the shelves, they would be sued.

What makes this case so interesting is the fact that Rockart Brewery, after seeking the advice of counsel, was told it was likely they would PREVAIL in its defense against Hansen Naturals. The only problem was the legal fees it would take to put on such a defense would bankrupt the company. This left Rockart Brewery with two choices: (1) discontinuing use of THE VERMONSTER name, or (2) go bankrupt. Fortunately, Rockart Brewery rejected both of these options and instead used the local press and other social media avenues to create enough publicity that eventually led to Hansen Naturals backing down. But not all stories end up like this. More often than not when a small business is faced with a similar situation they decide to just stop using the name. We just don’t hear about these examples.

As Rockart Brewery demonstrates, regardless of the size of your business there can be severe repercussions for failing to protect your business’s name, even if use of the name by you is perfectly legal. A federally registered trademark not only helps to prevent others from using the likeness of your business’s name associated with the goods and services you provide, but it also makes it much more difficult to sue for trademark infringement for your use of the name.  In today’s market, the Internet has created a global economy where businesses all over the world will affect the way you do business. This is true even if your business is strictly limited to your local community.  As a result, it is important that you seek the necessary protections to the identity of your business.

So the question for any new business owner is how do you plan on protecting the identity of your business?  That’s simple…by federally registering the name of your business as a trademark with the Unites States Patent and Trademark Office. For more information regarding trademarks or help filing a trademark see our website: Trademark Law Firm.

Published March 20, 2013 by Alex Spurr.

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Athletes’ Trademarked Names – The Brand is Out on the Field!

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We have become too familiar with the term “Tebowing”, but did you know it represents a registered trademark? That’s right, Tim Tebow owns the trademark, “Tebowing”. In fact, he owns one trademark registration and twelve pending applications for variations of “Tebow”. Prior to his registration, others have wrongfully attempted to cash in on his name. In addition to Tebow’s thirteen, the United States Patent and Trademark Office (USPTO) shows twenty-one applications using a variation of the name “Tebow”. The applied for marks range from “It’s Tebow Time” to “What Would Tebow Do”. Needless to say, all the trademarks filed without Tebow’s consent received a rejection on a Section 2(a) basis for a false connection with a living individual.

As the NFL draft approaches, the young draft hopefuls need to start thinking about protecting their brand. A lot of athletes already understand the importance of trademark protection. Tiger Woods currently stands at eighteen trademark registrations that make use of his image or name. Jimmie Johnson owns two registered trademarks and one pending application. Nike owns the Jeter logo, named after Derek Jeter. David Beckham currently enjoys six registered trademarks and one pending application. Victor Cruz owns eight pending trademark applications, none of which include his end zone salsa dance. However, he does have a few trademarks pending for his Young Whales brand. Lebron James owns four registered trademarks and three pending marks. Surprisingly, Lebron James does not own “King James Active wear”, the registration, filed in 2009, belongs to a South Carolina resident. Athletes understand that their image sells. As a result, some seek to protect that image through registrations with the USPTO.

A couple of newer athletes understand the value of a trademark. From the 2012 NFL draft Robert Griffin III and Colin Kaepernick have both filed for trademark registrations. RGIII currently owns eleven pending applications for various phrases, such as “Unbelievably Believable” and “Work Hard Stay Humble”. He also owns three pending applications for marks utilizing his name, including his well-known monikers, “RG3” and “RGIII”. Colin Kaepernick holds six pending applications that feature all or a portion of his last name, such as “Kap 7” and “Kaepernicking”. Both of the starting quarterbacks in the 2013 Super Bowl have a trademark associated with their name. Joe Flacco owns his name as a trademark for athletic apparel, advertising services, and entertainment services in the field of athletics. These younger athletes understand the importance of protecting their brand through trademark registration. Other athletes should follow in their footsteps.

People know fame sells. As a result, athletes need to keep a watchful eye on businesses and individuals that try to claim that fame as their own. Two trademark applications have received rejections from the USPTO for trying to use the name Justin Blackmon, one not so indiscrete (“Justin Time Blackmon” and “Justin Blackmon”). Andrew Luck does not own a federally registered trademark. However, some still toe the legal line by attempting to register trademarks using his name. One hundred and thirty-six trademark applications and registrations feature the word “luck” for clothing. Some of them seem like allusions to the number one overall pick in the 2012 NFL draft. “Suck For Luck” represents one example. This application utilizes a common phrase in 2011 in reference to fans hope to attain the number one pick in the 2012 draft for the sake of acquiring Andrew Luck. These younger athletes need to realize, like some of their colleagues, they obtain fame the day they turn professional and others will try to use that name to profit unfairly.

The Lanham Act provides some restrictions to acquiring a trademark for goods or services using a name based on an individual. As discussed herein, Section 2(a) prohibits falsely suggesting a connection with a living individual. However, you can overcome this restriction by showing consent of the living individual to use the name in association with the goods or services. As a result, athletes provide a written consent to use their likeness in the mark, which they provide as part of the application record. In addition, Section 2(e)(4) restricts the registration of primarily a mere surname. However, most athletes overcome this rejection by having the surname combined with additional matter (i.e. no longer merely a surname). Athletes have hurdles to acquire trademark registration of their name. However, the benefits of applying far outweigh the chance of receiving a rejection.

Athletes should understand that their name represents their brand. Trademark protection prevents others from profiting through false association. Trademark registration offers athletes the opportunity to reap the benefits of their own image. To all the athletes, and in the words of Kid President, “that means it’s time to do something”, protect your name, get a trademark. For more information regarding trademarks or help filing a trademark see our website: Our Trademark Law Firm.

Published March 18, 2013 by Brent Sausser.

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