“Sorry — Your Business Name Has to Change”
What is a brand anyway?
Think of your favorite local business — perhaps a coffee shop, restaurant, clothing store, or even that one gas station with the best donuts. Now picture it in your mind. What do you see? Most people will imagine the name of the company, the logo, and the colors they associate with it. All of these identifying characteristics of a business are part of its branding, fall under the legal category of intellectual property, and can be protected by trademark registration.
Why protect a brand?
Many small businesses do not seek out trademarkprotection for their brand, believing this is only something to think about once they are “successful.” Unfortunately, that can lead to an unpleasant letter stating “sorry — your business name has to change.” For the business, and its owner, this may mean:
- new signage on the business
- new logos on uniforms
- a new website domain and edits to the existing site
- new advertising materials
- new business cards
- new coloring for displays
- legal expenses
- lost time and energy
How to protect a brand
The ideal way to avoid these complications is to proactively protect the business brand by doing three things:
- conducting a diligent clearance search before choosing a brand to be confident it is available;
- filing for federal trademark registration on the name and logo for the business; and
- properly using the registered trademarks to strengthen the business brand.
The first step in conducting a clearance search is to decide on a name or list of names for your business. Once you do so, spend time on the internet looking for other businesses using the same, or similar, name. Consider companies that may be related, but not directly on point. For example, a brewery may want to look at vineyards, distilleries, sports drinks, or even coffee roasters. Once you feel confident no other company is using the brand you want, speak with a trademark attorney to assist in searching state and federal trademark registries. In the United States, a company can file for trademark protection on a brand it intends to use in the future, and therefore may have protection on a brand without actually having launched it publicly yet. Don’t be afraid to ask for a flat rate on this work, as growing businesses need to be careful not to overreach on their budgets.
Federal trademark registration provides protection throughout the entire United States, including areas where your business is not operating. For example, a local Dallas company obtaining federal trademark registration now has protection on its brand in Alaska, California, and Florida. In the age of the internet, “local” has lost some of its meaning — after all, problems with an identically-named business in Florida could result in consumer confusion. Imagine a local restaurant that is building a growing reputation for quality and community service. Now imagine an identically-named restaurant in another state has an outbreak of food poisoning leading to an uptick in its internet presence due to news coverage. Will a consumer, searching for that local restaurant, realize that the news article online refers to a completely different business?
Most trademark attorneys will provide federal trademark registration for a flat rate. This rate should include:
- A preliminary clearance search;
- Discussion as to the proper goods or services the business offers;
- Gathering up evidence (called “specimens”) of actual use of the brand;
- Preparing federal trademark filing paperwork; and
- The mandatory government filing fee.
Notably, because trademarks are divided into classes (a class for barbershops, a class for perfume, etc.), your application may require more than a single class. This should be clearly explained, and you should have a clear understanding of both the total cost of the application and the long-term cost for trademark registration.
Once your mark is filed, the application will take three months, on average, to be reviewed by the United States Patent and Trademark Office. The good news is that, once granted, your registration date will look backward to the date you filed, so the delay is more of a nuisance than an obstacle to protection of your brand. Although the steps involved in obtaining final registration are beyond the scope of this article, a trademark attorney can provide general education as to how the process works.
Once your business has registered its trademark, you now have the ability to mark your brand with the ® symbol. This symbol demonstrates to customers and competitors that you have obtained federal protection, and provides you with additional legal options when confronted by other businesses utilizing your brand. As a growing business, proper use of your brand can provide a shield against larger competitors, and can lay the foundation for future expansion into other states, franchising, licensing, or sale of the business. As the company grows, the brand can expand to new service lines and new goods, creating a trademark portfolio across a number of classes. A look at the Nike® brand will show you how far a mark can extend — from basketballs to water bottles, from clothing to cell phone applications, a properly-protected brand can obtain global reach while minimizing legal risk.
Protecting your business and its brand is a critical early step for long-term success. Taking proactive steps can prevent your company from receiving the dreaded “change your name” letter, and let you focus on what you do best — offering a great product to your community.