To Trademark or Not to Trademark?

[Trevor Kuntz]

I'm wondering if anyone here has had any experience with trademarks, trademarks challenges, or being sent cease and desist letters regarding their untrademarked logos, names, etc.?

I'm mulling over some different business ideas right now that would be largely based around a specific brand. I don't want to spend all of my time building a brand only to find it challenged or trademarked by a competitor, but at the same time, I don't want to spend a lot of my resources to protect my brand and then end up finding out that my idea is maybe not as viable or as successful as I had hoped it would be.

I guess that I'm trying to find the right balance between being totally vulnerable and overprotecting/wasting resources on an untested brand.

What are your thoughts? Do you have any tips?

 

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[dochustle]

I am in the same boat. In the process of building an online business and am conscious of spending upfront. I would hope I get to the point of needing a trademark but is it safer to just do it upfront ?

 

[Trevor Kuntz]

I don't feel comfortable revealing my business idea on here as of yet, but I have another question about trademark infringement, so I'll reveal the name.

Xhilarating is the brand that I'm looking at right now. From what I can tell, it was only filed for once and it was abandoned (not challenged) by the filer in 2009. From what I can tell, there are no trademarks for "Exhilarating" (though there is one for "Exhilarate") either, but in the case that there were, would "Xhilarating" be different enough from "Exhilarating" or would it be infringing?

I've also seen cases where trademarks were filed in say, 2002, but weren't registered for 3+ years or trademarks that were filed and then cancelled 10 or 15 years down the road. If you filed for a trademark, how long did it take for your trademark to register??

I've seen the FAQs on trademark sites, but I'm just trying to draw from personal experiences here. Thanks!

 

[Trevor Kuntz]

Any advice?

 

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[40000]

I don't feel comfortable revealing my business idea on here as of yet, but I have another question about trademark infringement, so I'll reveal the name.

Xhilarating is the brand that I'm looking at right now. From what I can tell, it was only filed for once and it was abandoned (not challenged) by the filer in 2009. From what I can tell, there are no trademarks for "Exhilarating" (though there is one for "Exhilarate") either, but in the case that there were, would "Xhilarating" be different enough from "Exhilarating" or would it be infringing?

I've also seen cases where trademarks were filed in say, 2002, but weren't registered for 3+ years or trademarks that were filed and then cancelled 10 or 15 years down the road. If you filed for a trademark, how long did it take for your trademark to register??

I've seen the FAQs on trademark sites, but I'm just trying to draw from personal experiences here. Thanks!

1) Normally takes between 12-18 months to get a trademark approved.

2) Exhilarate and xhilarating do "sound" pretty similar, which can cause to mistake one for the other, and is a reason (among others) to have your trademark challenged, HOWEVER, if the category for which you are filing is different (for example Exhilarate is filed under category 16 "Stationery products" and you are filing under category 25 "services", you should be good. Look closely at this as there are many different categories.

3) There are pretty good and inexpensive books out there about filing trademarks yourself, you can try NOLO for example.

4) It is better to 1st USE your name and then register it. If not, you have to file for "an intention to use". This process is more complex and also approval takes longer.

5) A disappointing thing about trademark to me is that EVEN IF YOU HAVE YOUR TRADEMARK REGISTERED AND APPROVED BY USPTO, there is ALWAYS the chance that somebody can claim PRIOR use of the trademark, even if it was never registered by them, and they will have the rights to use it over you. On the other hand, having the trademark name registered, DOES add a good layer of protection in the event that someone might want to register your name and desist due to your registration records, (sort of what happened to you when you found the name "exhilarate", it is also a good practice if to plan to sell your business (brand included) in the future, to have the name protected.

6) Cost to register is $325.00. Also if you decide not to register the brand name BUT still use it, try to document as much as possible the date when your brand name was first used by you. This will help in the event that somebody tries to use it after you.

Just my 2 cents, let me know if you have any other questions, I filed my brand name 3 years ago for writing pens (under cat 16) and I am in the process of applying for a new unrelated trademark name this year. good luck!

 

[Trevor Kuntz]

Thank you! This is exactly what I needed to know.

So your best advice would be for me to get on the ball with this brand, and then file a few months after I begin using it?

I talked to a customer service rep at Trademarkia yesterday, and she said that I should just file an intention to use application, but she didn't say anything about a longer wait or it being more complex, so that's good to know.

The initial cost isn't such a big deal to me, but I just want to file in the most effective way possible so that I'm not challenged (in which case, I would have to spend even more money). What have you found is the best way to document your brand name usage?

 

[evanwebb]

One that I learned from my trademark experience is you have to remember to maintain your trademark....mine just expired because I didn't keep maintaining it.

 

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[Trevor Kuntz]

One that I learned from my trademark experience is you have to remember to maintain your trademark....mine just expired because I didn't keep maintaining it.

What was your trademark for and why did you choose to get a trademark in the first place?

 

[40000]

Thank you! This is exactly what I needed to know.

So your best advice would be for me to get on the ball with this brand, and then file a few months after I begin using it?

I talked to a customer service rep at Trademarkia yesterday, and she said that I should just file an intention to use application, but she didn't say anything about a longer wait or it being more complex, so that's good to know.

The initial cost isn't such a big deal to me, but I just want to file in the most effective way possible so that I'm not challenged (in which case, I would have to spend even more money). What have you found is the best way to document your brand name usage?

to answer your questions:

- Yes, If I were you I would first use the brand and then trademark it.
- the rep at trademarkia might have its own view on the matter, what I recommended is based on my own research and also from a (paid) appointment that I had with a trademark lawyer.

- In reference to documentation of use, just keep whatever you can think of that can prove "use" of the brand and the"date" when was first used, for instance: brochures, dated invoices to customers, invoices from suppliers detailing your brand name, packaging designs, pictures of the products, artworks, even e-mails to customers promoting the brand; and (very important!) pieces of advertisement, (on and offline).

If you want to go a bit to the extreme and still not file for the trademark, you can follow a common practice used by "low-budget" writers and musicians, they will put their work in and envelop, then certified-mail the envelop to their own address and after they receive the envelop from the postal service, they will keep it without opening it, this will prove in the future the content of their work and the date of production.

once again the comments above are based on my own research on the matter, wish you the best, and let us know how it goes for you with your trademark.

 

[evanwebb]

It was for a series of books and educational products. I chose to trademark because I had a really good tagline as part of my marketing that someone else could easily imitate/rip-off. The intention is to create a brand. I think the real reason I chose to get a trademark was a little bit of ignorance on just how important they aren't.

 

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[Trevor Kuntz]

- In reference to documentation of use, just keep whatever you can think of that can prove "use" of the brand and the"date" when was first used, for instance: brochures, dated invoices to customers, invoices from suppliers detailing your brand name, packaging designs, pictures of the products, artworks, even e-mails to customers promoting the brand; and (very important!) pieces of advertisement, (on and offline).

If you want to go a bit to the extreme and still not file for the trademark, you can follow a common practice used by "low-budget" writers and musicians, they will put their work in and envelop, then certified-mail the envelop to their own address and after they receive the envelop from the postal service, they will keep it without opening it, this will prove in the future the content of their work and the date of production.

Thanks for the insight! I will begin documenting stuff in case I do trademark down the road.

I think the real reason I chose to get a trademark was a little bit of ignorance on just how important they aren't.

Why would you say that trademarks aren't important? Just curious.

 

[Chiara GB.]

Thank you guys for this discussion, i had a lot of questions regarding Trademark but you've quite much confirmed what I thought.

Good luck on your journey!