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BRANDING

Thursday, 07 March 2013 8:00

Future Conflict

By - Michael Rader

When a brand name grows to any significance, that brand name can come up against a number of conflicts that can possibly become greatly expensive. Some common questions regarding brand name usage are:

  1. Can I have the same brand name as an existing company, but sell or offer something different?
  2. Can I use a similar sounding or spelled brand name?
  3. Can I own a made up word?
  4. When can I trademark my brand name?
  5. What rights do I have to my brand name?
  6. Does a trademark extend out of country?

Lets look into each of these questions.

  1. Can I have the same brand name as an existing company, but sell or offer something different?
  2. Answer: Sure you can, but do you want to? Not only will it be very difficult and frustrating getting your customers to recognize your brand outside the already popular one, but companies that have a sizeable reputation to protect can also take action even if you are operating outside their sector.  You may not be diverting business however, you may be considered to be taking unfair advantage or causing damage to their brand.  The risks of using a name matching a well-known brand are not worth the pain and extra work, not to mention the possibility of losing your business.  Brandroot is equipped with original and creative brand names you cannot go wrong with.

  3. Can I use a similar sounding or spelled brand name?
  4. Answer: Of course you can, but again do you want to? In the Japanese market, Logitech, a global provider of personal peripherals for computers and other digital platforms, uses the brand name Logicool since a company known as Logitec, which focuses on computer peripheral as well, has been a Japanese company since 1982. Similar sounding or spelled trademarks in the same industry can be infringing; Logitech chose to avoid this situation. Brandroot suggests this as well. Each name found at Brandroot is not only researched for trademark availability, but is also analysed for any existing similar sounding brand names.

  5. Can I own a made up word?
  6. Answer: If you trademark your business brand name, you own rights to that name within your sector of business. The first thing to remember is that a trademark represents a brand. What that means is that when you trademark a name, slogan, etc. you are protecting your brand from infringers. That is the whole purpose of a trademark. A lot of people ask if they can trademark a name so they can charge or sue people that are using it, however it does not work this way. You cannot just trademark anything as you please. Furthermore, if you have trademarked a name already being used in commerce and they pre-date your first use then they would have senior rights as a prior user and could even turn around and enforce against you even if you have the trademark registration. That said, having a registration does give you a great deal more leverage in enforcement especially against junior users who come along after the fact. You also cannot trademark generic words like water if you are selling water. A made-up word that does not exist in the industry can be perfectly trademarked and owned by you.

  7. When can I trademark my brand name?
  8. Answer: The main requirement of getting a trademark is use in commerce. This means you have to be offering a product or service under the name/word you are requesting a trademark for. There is no way around this. You are welcome to file a trademark application if you are not doing anything yet, but the U.S. Trademark Office will not officially grant you the registration until you can show proof that you are using the name. When you trademark the name, you are also required to select a classification. For example, if you were selling clothing under the name Kioxy (offered on Brandroot), you would select class 25 for clothing. There is a classification for every type of service or product offered.

    Classifications mean that you will only own the rights to the name in the category you select at the time of filing. You are welcome to select multiple classes but each additional class has a $325 government-filing fee and you must be doing business within that class. In other words, you cannot select something like advertising services if you aren’t providing an advertising service. By owning the .com of your invented brand name, you are undoubtedly discouraging anyone else from ever using your name for a different classification.

    Current prices for U.S. Trademarks are as follows:

    1. $375.00 per international class for the filing of a paper application.
    2. $325.00 per international class for the filing of an electronic application.
    3. $275.00 per international class for the filing of an electronic application meeting certain additional requirements to be prescribed by the Director.

    Get more information at the United States Patent and Trademark office here.

  9. What rights do I have to my brand name?
  10. Answer: Should your trademark application process all the way to registration, you have the rights to your name in the class(es) you chose (see question 4, When can I trademark my brand name?, for classification information.) This prevents anyone else from using that name or similar names in that class for as long as you own the trademark. Whoever is listed as the owner of the trademark, would have sole rights. Sometimes this can be a company, other times an individual. You are welcome to license the trademark to allow other people to use it. A company like Linux sells licenses all the time to stores and individuals that wish to use the Linux name. Other companies like Apple are very strict on their names and will challenge anything similar. It would be up to you how you wish to use it.

    You will also be required to renew the trademark periodically. The first renewal is between the 5th and 6th year from the date of registration. After that it is every 10 years. Each time you renew you will be required to pay a set of renewal fees and provide new proof that you are still using the name in commerce. Many trademarks are unintentionally canceled this way. Someone will either forget to renew or they are no longer operating. You only own a trademark and the rights associated with a trademark for as long as you are doing business.

  11. Does a trademark extend out of country?
  12. Answer: A trademark is only good in the country you are applying. So a U.S. federal trademark will only protect you within the U.S. If you wanted to protect the name in other countries, you would be required to file an application in each respective country. As with the U.S., you would actually have to be doing business in the country you wish to trademark within. A trademark establishes your rights in the mark nationwide, where as simply using the trademark in commerce only affords protection in the State in which it is being used. Note, Each country also has its own filing fee.

There truly is a lot riding on your decision to choose a name for your big idea, but the simple start is ensuring that the .com for your desired name is available for use. This usually says a lot for the name's legal availability as well, since almost every company trying to protect their name usually first attains the .com and ones that sound similar. 

Last modified on Sunday, 21 April 2013 2:16

Michael Rader

With over ten years in web development and design, Michael Rader has expertise and technical know-how. But more than a skilled technician, he is an entrepreneur and innovator who helps startup’s and new businesses identify and define their future with a unique, brandable business name. Michael Rader is the founder and CEO of Brandroot®, a leading .com domain name marketplace. He currently lives in Kailua-Kona, Hawaii where he operates the business and authors a blog dedicated to naming and brand name establishment.


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