Trademark Registration: What Happens When You Skip It

the perils of skipping trademark registration Have you considered going through the trademark registration process? I run a web design studio, Aeolidia, and we just last week 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’re now redesigning for her. 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

The first time we really had to re-do everything from scratch was last spring. 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 no one else is using it, 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. 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 mymuffintop.com 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 muffintopbakery.com. 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 uspto.gov 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.

Changes We’ve Made

One of our clients went through the process of having her business name trademarked by an attorney. The process was painless, and she mentioned to her attorney, Ben Pollock, that he might want to see if our other clients would have a need for the service. When Ben of The Juniper Law Firm got in touch with me, I recognized him from some very helpful legal articles that he’d written for Design*Sponge’s Biz Ladies series, and it was great that we could offer this service from someone so familiar with creative small businesses. Now, it is such a relief to be asking all of our clients up front 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?

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 I can let you know how trademark research and registration with Juniper Law works, and suggest a plan of action with pricing to you. I have a mental block about finding these types of services for my own business – it just seems so hard to find someone trustworthy and affordable, and leaves me wondering how much work (and paperwork) will be needed from me along the way. What a relief to just tell Ben a few details about my business, then get to forget about it while his team do all the work and all the paperwork, then report back to me with their results and recommendations. Since this is such a huge relief and decrease in hassle, I wanted to reach out and offer this service as a standalone (no need to sign up for any design work from us). We aren’t marking up Ben’s usual pricing (though he is paying us for our project management time, the price is all the same to you), and it’s very reasonable – less than other online services offering the same thing. Trademark services begin at $159, plus the standard $325 government filing fee. Research begins at $139, and you can add an Attorney Analysis & Opinion letter for $349, which includes the attorney’s opinion on the likelihood of a successful application and the likely strength of your trademark in the marketplace.

Check This One Off Your To-Do List

Email me today to get the full list of services and zip right through this simple and speedy process.

Do you have experience with either trademarking a business name or wishing you had? Share your stories of business names & trademarks in the comments!

  • Sherry Richert Belul

    Arianne, you’re not going to believe this, but just an hour ago I was on the phone with the Trademark Office. I have a service mark + registered trademark for Simply Celebrate. It is time for the 10-year renewal and the fees will be $1000. Ouch! I was *just* trying to decide whether it was worth the money to renew when I saw your article headline on Twitter. I LOVE how life sometimes provides answers for us. I’ve not connected with you before, but you were a trademark angel today! 🙂

  • http://www.kissandpunch.com Julie Stewart

    Hi Arianne, I’m a lawyer turned designer. Thanks for this article, more people need to be wary of this issue when starting their small business. I do want to say though that a Google search is probably not going to get you a full outlook of what companies are out there. I’m not sure what kind of “research” Ben is offering, but I would recommend people get a Thomson & Thomson search report (or something similar) to fully cover similarly named companies in the US. That’s what I did before I even started my business. But definitely the more unique the name, the better! 🙂