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Ask HN: Would you trademark your startup?
31 points by lelele 2612 days ago | hide | past | web | favorite | 21 comments
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?

Thanks for your advice.

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




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).


I understand almost everyone here is US-centric, but what happens outside of US (both if startup is outside of US and market is not US-only)? I was advised to register for a madrid system trademark recently, but cost of that is just not an option, yet.


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.


$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.


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...


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.


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?


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.


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


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


We worked with Athol Foden at http://www.brighternaming.com/ (he has a lot of self-service resources on his site as well) to file the Bootstrappers Breakfast trademark. We paid about 1/4 of the rate that George is quoting (Athol is not an attorney) and had no trouble getting the trademark. If you have a complex situation you may benefit from an attorney, but I would take a look at the self-service resources on Athol's site as well.


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.


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


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.)


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...


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.


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


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.


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


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


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.




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