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Ask HN: Should I trademark prior to Y Combinator?
44 points by shameikachan on Apr 21, 2017 | hide | past | web | favorite | 35 comments
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.

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

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.

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.

The lesson is that once you have proven a concept and have raised more funds you can afford to pay the current holder of the domain that you desire?

This was a good read. Thank you so much for sharing. I own the .com to my name so I was happy to read the importance there.

> There may be a strong push to change your name for various reasons.

I will let the YC mavens give their opinion on YC, but in other cases in business coming into something with 'here is our name or concept but by all means if you want to change it let me know' is not seen as a good sign of commitment to your own creativy.

That doesn't mean you name your company and stay with it 'till the bitter end'. But it also doesn't mean that you name your company and then open it up to a vote by others as to what you should do (and not be decisive with your own convictions either).

i'm pretty set on the name and see it as a benefit to the company, so i'm willing to make my case should an issue ever arise. this is good intel for me to think on though. I hadn't even thought a potential investor bringing up a name change.

good intel. I'll check this out and read up more.

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.

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.

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.

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.... http://berryentertainmentlaw.com/the-abercrombie-formulation...

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

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://likelytocauseconfusion.com/likelihoodofconfusionfacto...

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 for posting this PG blog post - extremely on point: http://www.paulgraham.com/name.html

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.

Thank you for having the confidence to post and informed opinion from a lawyer perspective.*

I certainly appreciate the input.

*I recognize you are not acting as this person's lawyer :-)

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?

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.

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.

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.

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.

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

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.

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

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

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.

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


The reason you may need the lawyer is when the USPTO disputes your application... multiple times. This probably depends on who's reviewing your application as well.

Or just do it yourself: https://www.uspto.gov/trademark

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.

As mentioned above, there are also costs after you do the initial application, such as doing occasional searches to see if anyone else is infringing your mark. Also, if that search turns something up, maybe you can convince them yourself to stop doing it... if not then you spend $$$ on a lawyer and and there are more costs (which are then somewhat unpredictable ahead of time).

The USPTO has an application class that's $225. However, you have to agree to correspond only via email with USPTO.

I think it's a few hundred dollars.

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

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.

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.

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!

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