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ddzc

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Hi all,

The reason for this thread is my hopes of someone learning from a huge setback I'm experiencing right now with a new business.

I created a really good brand name quite some time ago (Feb 2016). When I created it, I checked the USPTO and the Canadian Trademark Database. The name wasn't used in my field. Since then, I've been through rounds of designs and prototypes. The process has been quite long. I received my finalized prototypes 2 weeks ago and I processed a production order. I've also begun marketing.

Something in the back of my mind told me to check the databases again and 2 new trademarks have now appeared in the US. One of them was submitted in Sept 2016 and the other in Dec 2016. Both are in registered in my industry. I have now lost total use of this name. Most people recommend to trademark after you start selling, but I recently learnt that you can still submit an application in advance before you start selling, just to get the process rolling. If you do this, a company can register after you and even start selling before you, but you will still have the upper hand in the courts due to the registration date and submission date, regardless of the date your products hit the market (as per my trademark attorney).

In addition to the above, 1 out of the 2 is a Chinese trademark squatter. Yes, these unethical piece of shits exist in this category also. I had no idea. What this means is, this person falsely trademarked my name before me, without having any real intentional use for it and for the sole purpose and intention of suing a company like mine in the future for trademark infringement. I'm assuming, one of the close factories I contacted in China last year found out about my name and trademarked it before I did. I checked the USPTO database files and this person clearly stole my logo (altered it just a tad), and photo shopped it on a bunch of products to look legitimate. Only about 3 factories actually knew my name because I usually contact suppliers with a fake name linked to a gmail account. The three factories which knew about it were the ones I was serious about doing prototypes with and my logo were in my design and technical specs. It's also just possible that someone came across my name by some other means and decided to trademark it before I got around to doing so.

I had to put a stop on production on all my products. I had to stop all packaging with my logo on it. I have to now create a new name with in a few days, incorporate it, redo all my social media, websites, TRADEMARK it, etc. This is a huge mess right now, has kicked me in the nuts hard and demotivated me to a huge degree. It took me several months to find my original brand name and I'm having a very hard time coming up with something just as good or better.

I hope someone learns from my mistakes and never trust anyone, especially factories overseas. Once you create a brand name for your business, I recommend for you to trademark it ASAP. If you're in Canada or US, I suggest trademarking it in both countries. I'm in Canada, I'm focusing on US first, Canada second (all of my products are being imported to the US and shipped from the US) so the US trademark is of more importance.

Cheers,
Dan
 
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AllenCrawley

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Same thing happened to me! My local, US based manufacturer was the one that filed it! I briefly explained what happened and how I got it assigned over to me here.

You mention you have an attorney? From my research, if you can show you had the name in commerce use prior to their filing you can have their trademark revoked. I believe it's called Common Law Rights and Priority of Use. I know you haven't sold any of these products yet and that may be a problem but I do wonder if showing your business registration and your website registration dates would be enough?
 

ddzc

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Same thing happened to me! My local, US based manufacturer was the one that filed it! I briefly explained what happened and how I got it assigned over to me here.

You mention you have an attorney? From my research, if you can show you had the name in commerce use prior to their filing you can have their trademark revoked. I believe it's called Common Law Rights and Priority of Use. I know you haven't sold any of these products yet and that may be a problem but I do wonder if showing your business registration and your website registration dates would be enough?

Wow, your own local manufacturer did that to you?! That's despicable. I can't view the thread, is it on the inside? I have to renew my membership still.

Well, I registered the domain and have a master business license dated Feb 2016. I started my social media in July 2016. In my case, there are two trademarks (pending). One of the two will go through and be registered as per the USPTO and my attorney. The non Chinese trademark is legit (Dec 2016 registration). I also tracked their use and they've been selling on Amazon heavily with the name since May 2016. I'll definitely lose the case to this company. If I submitted my application in Feb or Mar 2016, I would have been safe and I could have sued the company who's selling on Amazon (if they did so). The product type is not the same, but the category is, which is enough for the USPTO to reject my application. My attorney also told me, to submit a trademark and fight BOTH active trademark registrations, it will cost me up to 10-15K for each case. and I have a very low probability of winning either of them.

I've been beating myself up for this for days now, for not registering it back when I created it.

@AllenCrawley , question for you, did you submit your trademark online or did you use a lawyer? I keep hearing mixed results that most applicants do not get approved when submitting solo via the online portal. The cost is around $275 to self file, my lawyer wants $1500 to do it!
 
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E-Sharp

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Wow. Thanks for posting this, it's really good info. Sorry you're going through all this.
 

Eskil

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Very important stuff, and thanks for posting this reminder to everyone here.

Trademark / patent infringers are indeed ruthless, and have zero honor, decency, or shame. Notoriously, Chinese companies are by and large the biggest offenders in this field.

If you're gonna have prototypes / product made from scratch in China, I always suggest (if possible) having various parts of it sourced from a few different sources and then assembled by a third party - without telling any one of them what the parts are for (and yes, they will push you relentlessly to find out, lol). It won't stop someone from eventually figuring it out and making the whole thing, but it will give you a head start and at least create somewhat of a barrier.

(Lol @AllenCrawley I still can't believe that guy actually trademarked your name behind your back...what a douche move)
 

TheRegalMachine

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Around 2008 I was part of an cartooning and art forum. A pair of guys made a thread about naming their art studio. When replying I made a goof and quoted one of their suggested named wrong. We had a laugh but I took a liking to the name and since have planned that if I ever started an art studio/comic book company/animation studio I'd use it.
Turned out the name is used by an obscure British metal band.
I figured it's not in the same space and if I tag "animation" or some other identifier on the end I would be safe.
Then I started to look up trademarks under the name.
As one word it's live, but the name has been trademarked twice before and were abandoned.
Once by game company Konami.
Trademark squatters are pretty common. And they let them sit get cancelled and abandoned a lot.
So I'm not letting it bother me too much.
Like I said there are ways to differentiate a brand with similar names unless the other one is just a monster and has too much clout.
Not in the same space as the band but in the same space as the one that's being squatted.
As far as I know it's an iffy gamble and the first one to the finish line gets to drink the milk.
In my case this is all hypothetical because I have no mean to start a studio short term but if I reach a point in time where I have the means to maybe buy the trademark from the owner that would be nice. Hopefully it's abandoned by then.
 

AG356

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Damn, I was thinking about this for quite some time now wondering if the 1k is worth it. Looks like it is. Currently researching the necessary steps to take to trademark my brand.

Thank you and I hope everything works out for you.
 
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Walter Hay

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This story bothers me so much that I am here publishing a chapter from my labeling book in the hope that it might help some to avoid being bitten by these snakes in the grass.
++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++
19. Protect Your Brand From Your Suppliers By Using Post- Production Labeling Or Branding

Wherever you source your products you will be open to the risk of competitors trying to copy what you are selling. Often they will do image searches in the hope of finding your product advertised by the manufacturer.

If you are buying locally in western countries the risk is greatly reduced, but if you are buying from China that risk is substantial. The business manufacturing your product will often disregard requests to refrain from publishing pictures of your branded or labelled product.

You can avoid that part of the risk by ordering all of your products without any brand or label. The next step is to attach your brand or label after you receive the unbranded goods. In the previous chapters you have plenty of options from which to choose.

If your product requires compliance labeling, it might be possible in some cases to attach generic compliance labels in the factory, but without any brand displayed.

Even if you have to include your brand name on the compliance labels there is a tricky way around that. Use a different business name, not your trading or brand name. When placing orders with the manufacturer, don’t buy in your trading name. You should not disclose your website address to them either.

Therefore, if you want to remain virtually anonymous to the supplier, your very first inquiry must be in a name other than your real trading name.

It is worth noting that in many cases it will be cheaper to label post-production than to pay what you would be charged by Chinese manufacturers. They have in their psyche the idea that they can make a little extra by charging for set up. If you want direct printing on your product they will usually quote around $50 per color to set up.
+++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++

While this chapter is intended to help avoid or at least slow down the copying of your brand name, logo etc., it is still worth heeding the advice given from bitter experience by @ddzc Take protective action as early as possible.

Walter
 
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ddzc

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This story bothers me so much that I am here publishing a chapter from my labeling book in the hope that it might help some to avoid being bitten by these snakes in the grass.
++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++
19. Protect Your Brand From Your Suppliers By Using Post- Production Labeling Or Branding

Wherever you source your products you will be open to the risk of competitors trying to copy what you are selling. Often they will do image searches in the hope of finding your product advertised by the manufacturer.

If you are buying locally in western countries the risk is greatly reduced, but if you are buying from China that risk is substantial. The business manufacturing your product will often disregard requests to refrain from publishing pictures of your branded or labelled product.

You can avoid that part of the risk by ordering all of your products without any brand or label. The next step is to attach your brand or label after you receive the unbranded goods. In the previous chapters you have plenty of options from which to choose.

If your product requires compliance labeling, it might be possible in some cases to attach generic compliance labels in the factory, but without any brand displayed.

Even if you have to include your brand name on the compliance labels there is a tricky way around that. Use a different business name, not your trading or brand name. When placing orders with the manufacturer, don’t buy in your trading name. You should not disclose your website address to them either.

Therefore, if you want to remain virtually anonymous to the supplier, your very first inquiry must be in a name other than your real trading name.

It is worth noting that in many cases it will be cheaper to label post-production than to pay what you would be charged by Chinese manufacturers. They have in their psyche the idea that they can make a little extra by charging for set up. If you want direct printing on your product they will usually quote around $50 per color to set up.
++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++++

While this chapter is intended to help avoid or at least slow down the copying of your brand name, logo etc., it is still worth heeding the advice given from bitter experience by @ddzc Take protective action as early as possible.

Walter

Good points Walter. With my product in particular, the logo and branding is part of the manufacturing process while it's being built in the factory. It would literally be impossible for me to label and brand it afterwards, unfortunately. There's about 3-4 different stages throughout manufacturing where the brand name and logo is engraved. In cases like mine, the trademark needs to be done before prototyping even begins.
 
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Walter Hay

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Good points Walter. With my product in particular, the logo and branding is part of the manufacturing process while it's being built in the factory. It would literally be impossible for me to label and brand it afterwards, unfortunately. There's about 3-4 different stages throughout manufacturing where the brand name and logo is engraved. In cases like mine, the trademark needs to be done before prototyping even begins.
You are quite right. For example there are some cases in which the brand or logo is part of a mold, and that might be in a form or location where post production branding is impossible. I have even seen cases in which the logo is part of the product shape, and if not there, the product would not exist.

But, unless it is impossible for the brand or logo to be done post-production, I would recommend that it be done after it has left the factory. With modern marking methods that I explain in detail in the labeling book it would be possible in the great majority of cases. It might look different to a molded brand, but it will be there - usually in a permanent form.

This doesn't only apply to molded products. It can even apply to clothing or, believe it or not, paper products.

I don't want my suggestion to detract from the great value of your warning. Even if readers decide to follow my advice about post-production labeling, it is imperative that they protect their trademark at the earliest possible time.

Walter
 
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The-J

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Already gave the homie Rep++ but @Walter Hay really added something. Rep++

Think this deserves #notable or #gold. This is something I literally never thought of because I just felt 'oh a name is just a name' but after the fact it can be hard to change (not only that, you might come into violation later on that you don't even know about and that could cost you a LOT).
 

G-Man

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Looks like my startup costs will be that much higher than I'd hoped, FFS.

Thanks for the solid advice, nonetheless. Reps to @ddzc and @Walter Hay
 

Unknown

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This adds nothing to the thread whatsoever, but it's really cool receiving your first official trademark certificate in the mail.
 

iamonlyanegg

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Hey all, quick question on international trademarking for a global software startup.

How would you go about trademarking your company's name & logo internationally?

I see that the USPTO site mentions the Madrid system which if I'm not mistaken allows companies to register international trademarks. I feel like it would be a mistake launching something before protecting brand name with a trademark.

Any pointers would be much appreciated,
 

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