

Trademark Woes - spung

Hey HN, just wanted to vent and share our recent experiences lately with trademarking.<p>We had a very relevant and favorable name for our startup. We've purchased the domain name, built the technology, worked on design and marketing/messaging, and purchased business cards. Only months later after all that work and talking to customers and mentors to develop our product did we start the process to trademark our name. We're fortunate to have access to a trademark attorney, who told us that our name has a big chance conflicting with another trademark recently granted which lists what seems like every internet software good and service under the sun, only a few letters off but pronounced very similarly. Overall, we're fortunate to not have incorporated yet, but I think it's more the attachment to the name and the time spent developing our messaging that's got us down.<p>After getting over the initial stage of feeling bummed we have to abandon that relevant name, we spent a week brainstorming new names that sounded unique, domain was available, and a uspto.gov search turned up no concerning results. We narrowed it down to a few favorites, and decided on our favorite one. We were so excited around this new name, started brainstorming how we could leverage a play on the name for marketing, design, and focusing the company around a cool character mascot we began sketching. Spoke to the trademark attorney today and he found another trademark with goods and services described as a desktop CMS application and selling prerecorded video/audio recordings for lessons in marketing. At first we said no, that's so different from what we're doing! But then he showed us a similar application for a different spelling of the name we wanted, along with the letter for rejection by the trademark office, which explained:<p>The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.<p>Now we're back to square one. We're thinking for this round we need to brainstorm names that are obscure, possibly in a different language, or a word that means nothing at all.<p>Does anyone have any similar stories or advice to share? Going through this frustrating process, I'm surprised any startup is able to choose any name with common words in them. Do many companies just go with a name once they secure the domain and hope for the best?<p>Thanks for any feedback.
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kvinge
It's a pain the neck that is for sure!

Try Swahili (East Africa) names, they sound good rolling off the tongue. My
steps have always been: Domain Check, Search Name on Internet with Combos,
Trademark "word mark." If you can get past all of that, then you need to check
for the logo design trademark search. Really, the wordmark is quite important.
BUT....another important step now in my opinion is checking for all the
Twitter and Facebook URL's too. Trying to brand that one domain with
everything... makes it pretty tough huh?

If the domain is not available I move on, else go to the next steps.

I spent 4-6 months trying to come up with a name, but I suppose its different
for everyone.

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spung
Thanks for the Swahili tip, I will definitely check that out.

Wow 4-6 months, that puts things into perspective...we go through the same
steps except for the logo design trademark search. Currently we're two devs,
looking for a designer and business/marketer. Until then, I wear those hats as
well, and we always figured once we get a decent designer on board, we'd have
a logo worth pursuing a design trademark for.

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kvinge
I don't think it's really that important to have the logo designed exactly the
way you want it. The most important step is the 'word mark' or 'standard
character mark' the name itself. You probably don't want to spend $300 for
each class of good in the short-run, but minimally get the main one down, so
you have some grounds to work from. The most important step is adding the TM
to the name and logo being used in commerce. This helps protect the name ahead
of time.

You can file the trademark yourself. I would look at all the competitors in
the space through trademark searches, see how they define the trademark and
the define your own balancing being really broad vs. very exact. If there is a
problem in your filing, the attorney at the trademark office will help you out
and you don't need to pay anything. They can't advise you on how to protect
the name, but they will ensure the wording in form is correct. Actually, I was
quite impressed at their customer service!

This is all just my opinion, I am no expert in trademarks. But I love the
process of building a name brand. Trademarks are pretty important to avoid
complications that you have encountered. Good Luck! Sorry for the woes and I
hope you find a really cool name. Luckily .coms are loosing some ground as the
ONLY name to get these days.

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spung
Glad to hear the self-filing process is not too bad. Thank you for sharing
your experiences and advice, it's greatly appreciated!

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devinmontgomery
That sucks, but I'm surprised a domain was available when the trademark wasn't
- usually it's the other way around. What's worse than likelihood of confusion
claims are dilution claims. For marks that are well known enough, there
doesn't even need to be any kind relationship. Even a small plush toy
manufacturer couldn't call themselves "Microsoft." This is why so many web
companies go with neologisms.

Here's a pretty good primer on trademark law:
<http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm>

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spung
I was surprised at first too, but after all this hassle it seems like one
company with a domain name trademarked prevents others from buying domains
that sound, are spelled, or are somewhat similar selling relatively similar
products or services, so now I'm not so surprised.

I agree, dilution are an even bigger can of worms...

