
Ask HN: Would you trademark your startup? - lelele
Let's suppose you've come up with a unique name for your startup.  Besides domain registering such name with .com, .net and the usual suspects, would you bother in trademarking it too?  I mean, would you fear some hostile company or individual trademarking it to build trouble?<p>Thanks for your advice.<p>Edit: Of course I've already searched HN for related threads.  The only one I've found which answers my question - very old - states trademarking is a good idea: http://news.ycombinator.com/item?id=141515
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grellas
There are already some very good comments on this thread but I thought I would
add a few based on my own experience of nearly three decades working with
startups in Silicon Valley.

If you have a truly great name, and you are at an early stage, you can easily
have the name poached. Since a trademark registration can prevent that risk,
it can be helpful.

Under U.S. law, whenever you use a mark in commerce, you accrue common-law
rights coterminus with the scope of that usage - meaning, first in time gets
superior rights to others for the geographical area of first usage. However,
for any mark regarded as important, it is normally inadequate to rely on
common law rights and it is therefore usually much stronger to register the
mark to ensure solid protection throughout the relevant domain in which you
seek protection (usually, a federal trademark registration).

With a federal registration, you can do either an in-use application or an
intent-to-use (ITU) application. Most early-stage startups go with ITU. In-use
requires that you already have used the mark in interstate commerce. ITU
imposes no such requirement. It is comparatively simple to do an ITU
application and not too expensive to get the application on file and there are
few technical complexities associated with it (for example, you don't need to
submit specimens at the time of application). With an ITU application, you go
through a 12-to-18 month process by which the USPTO determines whether the
mark is registrable and whether it is available for the class of goods or
services desired. If it is, and is approved, you get superior rights over all
others to use the mark for that class of goods of services dating back to the
date of the original application (you do have to file a Statement of Use at
some point demonstrating actual use in interstate commerce but you can
normally take your time about this).

As far as practical examples of the swiping problem, the founders of what is
now Autodesk lost their first choice of company name years back after casually
presenting it to others but not registering it. I have also had unscrupulous
types try to do this with good names proposed to be used by some of our client
companies (in one case, we did an ITU application that beat the poacher by a
day, the poacher being a competitor who was just out to cause trouble).

Just as the ITU procedure makes it easy to register a mark without having ever
used it, it also makes it very easy for someone to poach that mark at any time
if it has never been registered. Therefore, until you do a registration, there
is always a theoretical risk that this might happen.

To sum up:

Can an unregistered mark used by an early-stage startup be poached? Most
definitely. Does it happen in practice? Very rarely. Against that context, it
is up to each founding team to make a cost-benefit assessment of whether it is
worth front-loading the legal expense (usually about $2K to $3K for a federal
registration) to guard against that risk. The usual answer is no. But, for any
really valuable name, it should be yes. From my experience, in practical terms
across a range of early-stage startups, it can easily be said, however, that
90+% do not bother with such registration at the start on cost-benefit
grounds.

Edit: By the way, if you do go to the trouble and expense of registering, make
sure the mark is likely _registrable_ , meaning (in most cases) that is not
purely descriptive of what your product or service does (this is the most
common problem by which founders get frustrated, and run up a lot of expense,
in early-stage trademarking).

~~~
aniket_ray
So in short, registration (which guards you against poaching) costs $2K - $3K.
Poaching of trademarks rarely ever happen. But, it's better to be safe than
sorry. So you have to decide on your own whether the cost is worth it.

~~~
woodpile
$2-3k? Um, sure, if you want to pay an attorney to do something that anyone
can do. From uspto.gov: "The application filing fee for the TEAS form is $325
per class of goods and/or services, while the TEAS Plus is $275 per class, but
has stricter filing requirements, than the regular TEAS form."

I've got several trademarks registered. Takes a few minutes to select the
appropriate class and a few more to register the mark. No sense in paying an
attorney and we're in agreement that it should be done. That name "insurance"
can be worth a lot.

~~~
srgseg
Agreed, it's really easy to do it yourself.

Two areas of possible confusion: specifying the 'Goods and Services'
description and the 'Class', e.g. 'IC 042' for 'Computer services'.

Just do some searches at <http://www.uspto.gov/ebc/tess/index.html> for
trademarks in the same general market as you, and copy the class they use.

E.g. this is the 37 Signals Basecamp trademark:
[http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:f1...](http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:f1miab.2.4)

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nroach
In the US, "common law" trademarks are automatic when you begin using the
name. However, it's a very limited scope of protection and often times can be
geographically limited.

For example, if I started a service like AirBnB and all my initial customers
were in Boston, then I could wind up being locked into only operating in
Boston (under my chosen name) if another company later registered the name.

For consumer web-only startups, you might be able to get by with just a domain
name, but it's a risk that in my mind isn't worth the cost savings. Yes, a
domain name registration and accompanying web site can be used as proof of use
in commerce, but it's not a guarantee and it doesn't help very much with
geographical restriction.

You'd be surprised how often people wind up with conflicting names. For a few
hundred dollars you can ensure that a huge headache down the road doesn't
happen. It's cheaper to get the registration at the start than to litigate
later or have to change your name.

~~~
imp
Since you're an IP lawyer, would you recommend that people starting out file
their own trademark applications? It seems daunting to me, and I would be
concerned about going through the whole process and winding up with a
trademark that didn't appropriately protect me. Is that a legitimate concern,
or should I not worry about that and file for a trademark myself?

Edit: Any tips or resources for people who have never filed a trademark
before?

~~~
nroach
Generally speaking, trademark applications aren't difficult. If you're a
detail-oriented person and don't mind doing some reading, you can absolutely
do it yourself.

The main advantage to hiring an attorney is that if you run into an opposition
or if the examiner has an issue with your application, an attorney may be
better able to persuade the office that the opposer is without grounds.

Start with a TESS search on the USPTO's site for live applications. Read up on
the US and International Classes that you might want to use and decide which
are applicable. If you run into similar names in your desired class, it might
be worth talking to an attorney about whether your mark is likely to be
allowable. Pay close attention to the specimen requirements if you're doing an
in-use application as compared to an ITU. A defective specimen that doesn't
establish the elements for use as an identifier of the goods or services can
be problematic.

You might also see if your IP attorney is willing to walk you through the
process the first time and then just answer questions on an as-needed basis.
You could also work out the application on paper and just ask an attorney to
look it over and use that form to fill in the information needed to file
electronically.

~~~
imp
Great! Thanks for the info. That's very useful.

~~~
nroach
If you do decide to go the self-filed route, make sure to read up on the
categories of names in terms of whether your mark is protectable. (generic,
descriptive =bad; arbitrary, fanciful =good)

There's' plenty of good information here:

<http://www.bitlaw.com/trademark/degrees.html>

------
imp
I spent some time (and money) discussing this issue with a trademark lawyer. A
brief summary of what I learned is:

\- Even if you don't own a U.S. Trademark for your mark, you still have some
limited protection against others using your mark if you can prove you started
using it first.

\- Filing a trademark is always a good idea. It would cost several thousands
of dollars, however to have a lawyer do it correctly. Yes, you can technically
do it yourself, but after talking with a lawyer about all the technicalities
related to trademarks, I would never trust myself to do it. Maybe others who
have done it without a lawyer can give their advice.

\- Registered domain names are only tangentially related to trademark rights.

Unless you have tons of cash to burn and have already launched and have good
traction, I wouldn't worry about filing a US trademark application yet. What
you NEED to do right now though, is search through the currently filed marks
and make sure that you don't conflict with any existing ones. If there are any
that you have concerns about, discuss the issue with a trademark lawyer and
they'll let you know if you should worry about it. It's even better to have
the lawyer search through the marks though, because they know what
specifically to look for with conflicting marks.

I wouldn't worry about a big company actively trying to screw you over by
filing a trademark for your company. What I would worry about is unknowingly
stepping on a big company's existing trademark.

IANAL though. Hope this helps. If you have any doubts at all, talk to a
lawyer. It may cost a couple hundred bucks for a consultation, but you'll
learn a lot from picking their brain. Well worth the money.

------
pbhjpbhj
You get a trademark automatically in Europe - it's an unregistered right like
copyright, I'm going to assume you're in the USA though (please remember
you're speaking to a global audience). You can register a trademark and you
get greater protection and make suing people easier if you do so.

Trademarks are indicators of the origin of goods/services. If someone uses
your trademark to pretend to be you then they're "passing off" their
goods/services as yours and you can sue. If someone uses your _registered_
trademark then they're tortuously infringing and your burden of proof is
lowered.

However, suppose your TM is lelele and you sell software. Your trademark
doesn't stop me from using "lelele" to sell tshirts, farm equipment, cars,
hamburgers, stationary, etc., using that name. I can't use your logo, that's
often copyright infringement too, but the name is fair game as there is no
chance for confusion between us.

Someone else can fill in the US/Canadian/OAPI/ARIPO/etc. situations.

As for hostile registration of your mark; I suspect it would be cheaper to
register it in the first place than defend against someone elses application
on the basis of your unregistered marks.

IANA-IP|TM-L

------
CatalystFactory
Hi Lelele,

The first thing I would do is check your name is in fact unique. Just because
you registered the name icoke.com, .net, .org, etc... doesn't mean you own a
trademark (common or otherwise) and doesn't mean you aren't infringing on
someone else's trademark.

The next step would be to weigh the cost/benefit of going through the
trademark process. It's not very costly, but is time consuming.

Is your startup up and running? Filing for a trademark for a service or
product that doesn't exist yet adds more complexity and cost to the process.

While I wouldn't suggest running to your nearest trademark attorney or god
forbid LegalZoom, I would reach out the lawyers you do know and ask them about
it.

(Disclaimer: None of the above is legal advice or forms an attorney client
relationship. The statements above are only for informational purposes and
should be used at your own risk.)

------
Keyframe
I would definitely, but registering a trademark with madrid protocol
protection can sum up to a high cost if you cover a number of countries.

edit:

here are the prices (just checked with local/national IP office, those are the
prices):

fees: <http://www.wipo.int/madrid/en/fees/sched.html>

and then additional fees for each individual country:
[http://www.wipo.int/export/sites/www/madridgazette/en/remark...](http://www.wipo.int/export/sites/www/madridgazette/en/remarks/ind_taxes.html)

------
hendler
Compared to all the other issues facing a startup, I don't see it as high
priority.

Name matters when it is your only differentiator against a small ecosystem and
you and the competition are otherwise quite similar (in appearance). But as a
startup, a great name is only going to get you a little bit of buzz. Like a
band name, there are a lot of bands with great names with horrible music, or
no marketing.

If you have the time or money to delegate the task, it doesn't hurt. But it
should be low on the list of priorities for early stage.

~~~
nroach
That's a valid rationale in terms of an offensive filing. But you should think
defensively as well. Does the perceived priority change if your name is
similar to that of another company who has obtained a registration? What
happens if they sue you? Will the cost of just responding to the suit be more
than the registration would have been in the first place?

Just some more factors to think about =D

------
rexreed
YES! I can't tell you how expensive it is to have to change your name or fight
a trademark suit after the fact. Trademarks can cost as low as $750 all-in.
they are easy to file, take about 6-9 months to work through the process, and
when you're done, you're guaranteed that you won't have to change your brand.

I've been on the receiving end of trademark objections and it's not pretty...
and the cost of defense FAR outweighs the cost of trademark... even if you
win.

------
bretthellman
Yes. Turn the question around, why wouldn't you file for a trademark? There is
some good info on the USPTO side about when you can use the ® symbol, and how
until you get the trademark you can use the TM trademark to stake your claim!
<http://bit.ly/bBHIZP>

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shin_lao
Yes, do it. It's pretty inexpensive (1000 € for the whole Europe).

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chopsueyar
Only if it is a common word so that you can remove it from the english
lexicon.

So , in school, teachers can tell their students, We are not allowed to use
these words, because Apple may bring litigation against the school district."

It is a pea-chamber, not a peapod.

