
Ask HN: Should I trademark prior to Y Combinator? - shameikachan
Should I trademark prior to Y Combinator? In my research prior to applying all fingers point towards waiting until I get into YC to incorporate or create a legal entity. Is this the same thought on Trademarking. Should I wait to get into YC to trademark? Any thoughts would be appreciated.
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27182818284
There may be a strong push to change your name for various reasons. That would
seem to make trademarking a waste of time. Paul Graham wrote about it a couple
of years ago
[http://www.paulgraham.com/name.html](http://www.paulgraham.com/name.html)

~~~
baddox
From that essay:

> 100% of the top 20 YC companies by valuation have the .com of their name.
> 94% of the top 50 do. But only 66% of companies in the current batch have
> the .com of their name. Which suggests there are lessons ahead for most of
> the rest, one way or another.

To me it suggests that having high valuations may be the cause of having the
.com domain. A more useful analysis would be _when_ companies that are now
successful got their domains.

~~~
dsacco
Yes, that stuck out to me as well. That was a poor way of conveying the point.
The 34% of YC that do not have a .com will probably just buy it once they have
the cash, regardless of whether or not they change the name.

------
gist
Well first you mean 'apply for a trademark' let's assume. Because it can take
anywhere from, say, 7 months to several years to get a trademark issued (I
have gotten them in as little as 7 months).

It's really a cost issue. If money is no object then there is little downside
other than a) alerting people to what you are doing (tm apps are public) b)
deciding if you will do it yourself or have an attorney do it for you.

Creating a legal entity is a bit more involved. You can apply for a trademark,
pay the nominal fee and assuming you do the application correctly (in the
right class) etc. you can just simply abandon it later if you change your
mind. You would only be out the fee. Not like state paperwork which is a bit
more sticky.

The date a trademark is put in use is important. So assuming you file as 1a
and are using the mark getting it in early could have benefits. Blocking
potential competitors and so on.

If you are on a shoestring and have little money then it most likely doesn't
pay to apply for the trademark and spend that money which you might need for
other things.

~~~
shameikachan
Thanks for the intel. I'm bootstrapping the company myself so I have to be
mindful on my spending right now. I checked and already know my class and have
my details, so it will cost me $225 to do without a lawyer. I'm running the
business and building the brand and see that no one has trademarked my company
name so I was thinking about doing it. I'm going to hold off and set a goal to
do it at Christmas time when I have extra funds.

------
mlissner
The important thing about a trademark is that you start using it. If you run
into a problem with somebody else using your name, the most important thing
will be who used it first, not who TM'ed it first. In fact, if they TM a name
that you had first, you can claw the name and the TM away from them.

Unless you are expecting somebody to steal/abuse your name, there's no rush to
TM.

------
libertymcateer
IP Lawyer here. Note: I am a lawyer, but I am not your lawyer.

Upon using your name in commerce you acquire common law trademark rights.
Filing a trademark _before_ you are actually using it in commerce requires
filing an Intent To Use trademark application and will cost you a few thousand
dollars in legal fees (or a hell of a lot more if you are doing international)
- either that or you are doing it yourself with trademarkia, and, in that
case, I wish you _bon chance_.

Try to choose a strong name, but be prepared to change it.

"Strong" means, in order: a completely made up word, a word that has nothing
to do with the product being offered, a word that is suggestive but not
decriptive of the product. For more information, look up the "abercrombie"
test.
[https://en.wikipedia.org/wiki/Abercrombie_%26_Fitch_Co._v._H...](https://en.wikipedia.org/wiki/Abercrombie_%26_Fitch_Co._v._Hunting_World,_Inc).
[http://berryentertainmentlaw.com/the-abercrombie-
formulation...](http://berryentertainmentlaw.com/the-abercrombie-formulation-
generic-descriptive-suggestive-arbitrary-and-fanciful-marks/)

If you want to search for competing marks, please note that this is an
extremely technical process. You can try to search on TESS, but it is very
difficult. [https://tess2.uspto.gov](https://tess2.uspto.gov)

Note that this is only US trademarks.

Additionally, if your question is "how do I know if my mark will be
infringing?" The answer is "that is an extremely hard and expensive question
to answer." The touchstone of trademark infringement is the "likelihood of
consumer confusion test," which is ensconced in the sleekcraft / polaroid
factors. [http://www3.ce9.uscourts.gov/jury-
instructions/node/244](http://www3.ce9.uscourts.gov/jury-
instructions/node/244)
[http://likelytocauseconfusion.com/likelihoodofconfusionfacto...](http://likelytocauseconfusion.com/likelihoodofconfusionfactors.html)

The point of all the above is that you really do need to be a professional at
this in order to have the wherewithal to make judgments about the likelihood
of a trademark's success. In addition, it takes a few business quarters to a
year and a half for a registration to issue.

The point of all this is that domai.nr is as important a tool as TESS, that
you can easily get lost in the weeds on this issue, that your own judgment is
in _no way_ a replacement or a substitute for a licensed attorney, that
trademark strategy is hugely complicated and can be a total sinkhole. What
does that mean? It means that, for a startup, like many, many other issues,
you do the best you can but keep in mind that you are going to have to spend a
lot of time and effort on it down the road.

Tl:dr: As a startup _in general_ : IF YOU HAVE THE MONEY, it is worth starting
this process this sooner rather than later. If you do NOT have the money, a
reasonable strategy is to move forward with a name that you like but _are
willing to change_. It is okay to change your name very early on. However, the
goal is to _avoid_ having to change your name when you already have a product
out and some market presence. For YC: Do you need a trademark before you apply
to YC? Almost definitely not - unless you are already selling your product. Do
you need a trademark before you start selling your service to enterprises or
spending money on marketing? It would be foolish not to at least engage an
attorney and start the process.

Note that many other IP attorneys may have different opinions. That's fine -
reasonable minds can differ on this subject, the above is an extremely short
primer. Also please note that _I AM NOT YOUR ATTORNEY AND IF YOU ARE THINKING
ABOUT FILING A TRADEMARK YOU NEED AN ATTORNEY._

Edit: shoutout to
[https://news.ycombinator.com/user?id=27182818284](https://news.ycombinator.com/user?id=27182818284)
for posting this PG blog post - extremely on point:
[http://www.paulgraham.com/name.html](http://www.paulgraham.com/name.html)

~~~
shameikachan
Thanks for the intel. I love the disclaimer. Don't worry, I won't try to claim
you :) My business is running under the current name, so i'm going to make it
a goal to start the trademark app process via the USPTO sight by the end of
the year. I don't have enough money to hire a lawyer as yet. I'm hoping to get
into YC so that I can take care of this then. It's a unique name and I already
own the domain and have a website running. This is all new to me, so I
appreciate your intel.

------
boxcardavin
Do it if it's your top priority. Do you have a brand and brand name that is
out there and essential to you or your customers right now?

------
jkarneges
The idea that startups should wait until after joining an accelerator to do
their filings seems a bit mythical to me. Maybe it worked back in the day when
founders applied with only an idea (or no idea), but now I'd expect most
companies to be pretty well established before entering an accelerator. C
corp, restricted stock with vesting schedules, the whole bit.

If you're already established with a public product, then you should just go
get the trademark. It's not that expensive. If you're stealth, then you could
wait, but only because of your stage of company, not anything to do with YC.

~~~
shameikachan
Well I did recently apply to YC and prior to applying and read through the
"How to successfully apply" and watch several video on their YouTube page.
They advised against creating legal entity prior to YC because a mistake could
be made and they even ask about this on the application. I have not created a
legal entity as yet. However, this prompted me to investigate on the trademark
matter. I just want to make sure i'm focusing on the important items first
with the resources I have available and not jumping the gun.

~~~
jkarneges
If you managed to get a YC invite with no registered company, then I suppose
you could wait on everything (and hats off to you in that case :))

If you end up not getting into YC, though, I'd say go ahead and register the
company anyway. You'll need it in order to take angel money or give out stock
options.

------
mrkurt
If you make a list of the top 10 things that are gonna hurt your company, a
trademark conflict won't be in there. So, no.

------
ComputerGuru
If you care enough to ask, find a trademark lawyer. An hour (or even half an
hour) of their time is all you need.

------
natch
IANAL. My understanding is that by using your name in commerce (in particular
interstate commerce) you already have an automatic trademark. But maybe you
mean to ask about trademark registration, which is a separate proactive step
you can take to give your trademark more protection.

------
pbreit
Will trademarking help you build a product that people want? There's your
answer.

------
auvi
Could anyone please give a ballpark number for the costs related to
trademarking?

~~~
chaostheory
I could be wrong, but if you're doing the application yourself, it's under
$500 for filing. Chances are you'll need a lawyer, and that's under $1000;
separate from filing.

~~~
adventured
You can easily do a trademark these days using services like LegalZoom for
about $500 (includes the Federal fee). No separate lawyer necessary.

[https://www.legalzoom.com/business/intellectual-
property/tra...](https://www.legalzoom.com/business/intellectual-
property/trademark-registration-pricing.html)

~~~
pbreit
Or just do it yourself:
[https://www.uspto.gov/trademark](https://www.uspto.gov/trademark)

~~~
Animats
I've done that. I hold the trademarks ANIMATS (supplemental register),
SITETRUTH, and DOWNSIDE. I have the domains "animats.com", "sitetruth.com",
and "downside.com". Those were all obtained simply by filing directly with the
USPTO. Unless you're in a crowded area of the namespace, trademarks aren't
hard.

Owning a trademark gives you strong rights in domain name disputes. This is
effective even if there's someone else who's a big name in a different
business area. See ICANN's UDRP.

------
TaylorGood
Trademark regardless if you're serious about giving it a go..

------
siegel
I could talk about this forever, but I'll restrain myself.

libertymcateer makes some great points. But I wanted to add two things:

1) For most people, when I think about registering a trademark, their concern
is getting priority so that other people cannot jump in and use the same mark.
Registering a trademark brings a host of benefits, but you don't need to
register to get priority over later users. You just need to use the mark "in
interstate commerce."

The problem for a company at your stage is this - chances are you are nowhere
near the point that you could be said to be using the mark in interstate
commerce. I'm assuming you aren't selling anything under the mark yet, right?

So, if you are really concerned about getting priority now, registration would
have a benefit - you could file what libertymcateer referred to as an "intent
to use" application. Your "priority date" would then be the date of your
application, NOT the date the mark registers.

Eventually you will need to show that you are using the mark in commerce, but
you can get up to 3 years to do that.

So, if really want to protect your mark now and are afraid someone might take
it before you are already using it, then applying for a trademark registration
can be worthwhile.

2) The other thing I tell companies in your position that are thinking about
registering a trademark is to think about the time, effort, and resources they
will be putting into building a brand around their desired trademark.

At the outset, it's easy to change branding. But let's say you start building
some recognition around a name over the course of a year or two, start getting
traction, etc..., and then you find out someone is already using the mark you
chose as your brand or something confusingly similar. At that point, you will
have sunk a bunch of money into a brand that needs to be changed and will have
to start sinking that money in again.

Why might you think of registering at the outset, then? Well, as
libertymcateer mentioned, you could do a search on TESS at the USPTO website.
But it's a clunky search system and it's not even complete for your purpose.

If you are looking for prior users of a mark that could interfere with your
right to start using a certain trademark, you need to look beyond marks that
have been registered or for which people have applied to register. If someone
is using a mark in commerce, but never applied to register, they can block
your use. And none of those marks will appear on TESS.

In addition, it's not just identical marks. It's confusingly similar marks
that can block your use. TESS can do some fuzzy searching, but you need to do
those kinds of searches on a much broader basis.

If you file a trademark application, a trademark examiner will do searches and
present objections if there are barriers to your getting trademark protection
for a mark. No, it's not foolproof - they can approve a mark and a 3rd party
can object. But it will be harder for a 3rd party to object if you actually
are able to register the mark. That puts aside the credibility you get in
having a registered trademark for a brand - random folks who want to write a
cease and desist letter will more likely be deterred if you've registered the
mark.

Now, applying to register the mark isn't the only way to get a better
assessment of whether your chosen brand name would be a good choice from a
trademark protection standpoint. There are trademark search services that can
do a good job seeking out competing marks. But you really do need a lawyer to
analyze the search results. That process will cost more than filing a
trademark application. (The lowest risk thing to do would be to have a
trademark search done, analyzed by a trademark attorney, and then filing an
application to register, but the costs add up and I'm assuming cost is an
issue here.)

So, essentially, filing a trademark application is relatively low-cost way to
get an assessment of the legal viability of a name for trademark purposes,
before you put your resources into building a brand around that name.

Just some things to think about.

~~~
shameikachan
Good intel. Thanks for sharing. I'm already selling my product under the name.
I did do a search and nothing turned up so I don't believe anyone has
trademarked anything as yet.

~~~
siegel
Good to hear! In that case, priority over other users is not a concern, at
least.

Honestly, given your question, just wait. If you are open to rebranding after
joining YC, then I just don't see the reason to spend the money on registering
a trademark. As I said, the priority issue seems to be taken care of for you.
And while there are other benefits to registering, don't worry about those
until you are convinced this is the name you want to use.

Good luck!

