MBA1338 Guest Teacher: Ali Smith- Tips to Avoid A Trademark ‘War of Words’

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Hey. Welcome to the Hundred Dollar MBA show. The nitty gritty of business simplified every single day with our daily 10 minute business lessons for the real world. I'm your host, your coach, your teacher Omar is at home. I'm also the co founder of the Hundred Dollar mba, a complete business training and community online and today's episode is a guest teacher episode. On our Guest Teacher episodes I bring on an expert to teach their area of expertise. Today we have Ali Smith and she'll be teaching you tips to avoid a trademark war of words. Ali Smith is a Product marketing manager of Trademark.com, awesome domain name, right? She's worked on intellectual property SaaS solutions for several years and we've brought Ali on today to teach you what to look out for when it comes to trademarks. When you're choosing your business name, for example, she'll be sharing tips on how to make sure not only do you stand out, but you stay out of trouble as well as how to file a trademark. In the US There's a lot to be covered, but you're in for a treat because Allie's gonna be explaining this in super simple terms so you know exactly what to do. So let's get into it. Let's get down to business. Get ready for some amazing tips when it comes to your own brand, naming your business and making sure you don't only stay out of trouble, but you stand out from the crowd. So that when people say the name of your the name of your product, other people know they're only talking about you and not anybody else. I'm going to pass it on to Ali now, but I'll be back with my takeaways and to wrap up the episode. But for now, take it away, Ali.

Hey guys, thanks for joining me today. I'm ali Smith of Trademark.com and I'll be teaching you about some critical do's and don'ts to keep front of mind when developing your brand name. All right, let's go. First things first, a little bit of background. You might be wondering what exactly is a trademark? Technically, it's a word, phrase, symbol and or design that identifies and distinguishes the source of products or services of one party from competitors. But at a more fundamental level, a brand is a business's identity. It represents products and services, but also your market reputation, right? It's a promise of consistency and reliability to customers, which are the foundations of trust and loyalty. However, creating and using a logo or slogan to distinguish a business usually is not enough to keep someone from using it as well. And in the US these common law or unregistered marks don't really provide any legal protection from copycats beyond your local area. And copycats are indeed lurking. In a recent survey, about 74% of brand owners experienced infringement of some kind in the past year. And you know, the knock on effects of that really aren't pleasant. The most common outcome is confused customers who mistakenly think that a competitor's product or service with a name that's really similar to yours is in fact associated with your business. This can quickly snowball into erosion of customer trust, lost revenue and a damaged reputation at best, or like an entire rebranding of your business or product at worst. And that's obviously a serious expense. The good news is that there are a few things you can do to keep your brand name safe, and that's starting with securing a registered trademark with the US Patent and Trademark Office, or the USPTO for short. There are a number of benefits to registering your trademark, and the biggest is probably the national notice of ownership of that mark in your industry. So that that's really significant, right? Once you register your mark with the uspto, it's yours. And anyone searching public trademark records will see that. But it's important to understand that this ownership isn't actually absolute. It's a common misconception that registration means no one else can have the same wordmark. And this is true, but actually only within your industry or area of business. Delta is a great example of this at work. It's the brand of an airline, right? But also a faucet manufacturer. If you're not familiar with the latter, the chances are still really low that you'd think the airline company was selling sinks now, too. Their products and services are so unrelated that there's really no natural reason for consumers to make a connection when there isn't one. So it's fine for these two companies to both register and use the same mark for their businesses. And that's basically the rule in a nutshell. As long as there's very little to no risk of consumer confusion, businesses in different industries can own the same mark. And that's really important to understand upfront. So, anyway, back to why registering your mark is important. Apart from establishing ownership nationwide, it can also make it easier to remove infringing products from store shelves, seize imported counterfeits, or take down websites using the infringing mark. A registered trademark gives you some advantages in court, too, like the right to sue in a federal court and in certain cases, like obtain damages and attorney's fees. So these are all pretty significant for your brand, and that makes trademark registration a good idea for your business. So now let's talk a little bit about how you get a registered trademark. This will give us the last bit of context we need for understanding the why behind some of the key naming considerations, which we'll move on to momentarily. I think that understanding the USPTO's process will help you better grasp what goes into choosing a good name and why. It's important to do that homework up front, even if you're not planning to register your mark right away. Securing a registered trademark is done in the US through the US Patent and Trademark Office. They're the federal gatekeeper for this form of intellectual property, and it's a somewhat lengthy process. When you submit your trademark registration application to the uspto, the date is recorded and it's entered into a queue. After a waiting period about three months, A USPTO examining attorney will review your application for completeness, and if they find any issues, they'll contact you, ask you to fix it before they move forward. But assuming everything is good to go, the next thing the examiners do is make sure your mark isn't generic. In other words, that your name isn't simply signifying the product or service it represents. Like ice cream, for example, for a frozen treat or hotels.com anyone has the right to use generic words to describe the products they're selling, so the PTO will not register a mark if it falls into this category. They'll just reject your application and you'll have to start over with a new mark or just forgo registration. It's really important to understand that if your mark is rejected, you don't get your money back, so make sure you understand how they'll evaluate your name upfront. If your desired word mark passes that test, then they compare it against already registered marks to make sure that a the mark is not claimed by someone else, which is pretty straightforward and self explanatory, and b that the mark you want is not too similar to any other marks in your area of business. This part is obviously more subjective, with the trademark examiners using their legal expertise to make decisions about what is or isn't too similar. What it comes down to is the idea of customer confusion that we talked about earlier with the Delta example. The USPTO wants to make sure as best they can that customers won't inadvertently draw a connection between your business and someone else's based on name and product similarity when there is no relationship. This can be tricky to assess, but there are a few general rules of thumb to guide you. The USPTO is generally going to be looking for other existing marks in your industry that sound the same, have a similar spelling, are visually similar, or have a similar meaning. So, for example, sneaky copycat versus sly copycat. Since we know this is an important aspect of the trademark examiner's evaluation, you can set yourself up for success by searching the USPTO and other sources in advance of submitting your application to uncover any problems and address those up front when they evaluate your mark. The PTO will also look for identical or similar marks that are considered well known or famous, regardless of whether or not they're in your same industry. Because they're so easily recognized by consumers and there's a higher likelihood of confusion. Famous marks actually enjoy a special level of trademark protection. So even though Nike predominantly makes shoes and athletic wear, your application would probably be rejected if you tried to register the word mark Nike for a sports drink, for example. And if the USPTO examiners don't catch it, you can bet Nike probably would. This brings us to the next stage in the process. If the examiner doesn't find any conflicting marks during their search, you're almost across the finish line. But before your mark is formally registered with the USPTO examiners publish it for opposition. What this means is that during a designated 30 day window, not just famous mark owners, but anyone who can prove that their business would be harmed by the registration of your mark can file an opposition, which is like a formal challenge to then be reviewed by a special body called the Trademark Trial and Appeal Board, or ttab. If the TTAB sides with the opposer, your mark will be rejected. Alternatively, you may be able to work out an agreement to coexist with the opposer and still secure your mark. With more than 1600 trademark registration applications filed with the USPTO every day, there are bound to be conflicts. Once you're through the process and you're a trademark owner, paying attention to new marks filed for opposition that might be similar to yours is a really critical step in discovering and stopping copycats before they get started. PTO examiners simply just can't catch every possible problem. So it's your responsibility to be vigilant and enforce your trademark rights. Monitoring services can actually be really helpful here, alerting you when there's an issue. So now that we've gone through the trademark registration process, you can probably see that it's incredibly important to avoid customer confusion and conflict with other trademark owners. And the key to achieving this is a highly distinctive name. Distinctive names are strong assets because they're not only easier to successfully register with the uspto, but they're also easier to protect in the marketplace. There's less of a chance that someone else will use an identical or similar word. Coming up with a highly distinctive name is easier said than done, of course, but we have another set of pointers to help you evaluate your trademark name choices. So we can think of word trademarks as existing on a spectrum of distinctiveness. At one end, distinctiveness is really low or non existent, and marks at this end are considered generic. We talked about this earlier with the ice cream example, right? Generic marks are common everyday names used regularly and because of this, they're not registrable. So stay away from these marks. If we move up one notch, we're getting slightly more distinct with what are known as descriptive marks. These identify characteristics of the product or service to which they pertain. So, continuing with our cold treats theme, Best ice cream would be an example. Honestly, these are also really weak and you'd be smart to avoid them if at all possible. The USPTO will not put descriptive marks on the primary trademark register. These are listed on what's known as the supplemental register, and it does not have the same legal advantages Interestingly, geographic place names often also fall into this category. These terms generally remain public so that any business operating in or near the area can use that place name without infringing on someone's trademark. In the middle of the spectrum we have suggestive marks. So this would be like creamy for ice cream. It hints at a characteristic of the product, but the consumer has to make that mental leap. Better yet are arbitrary marks. This is when the word is common but totally unconnected to the product or service at first glance. A good example of this in the ice cream world is Blue Bunny, right? The fewer existing associations customers have with the name you choose, the greater the opportunity you have to establish a 1:1 link with the word and your product or service in their mind, which is obviously ideal. And then the pinnacle of distinctiveness is fanciful marks. These are totally and completely made up words. Haagen Dazs is one of the absolute best examples of this concept. So despite sounding Danish, it was actually completely made up by the founder in the 1960s. And outside of my one track mind on ice cream, Exxon, Xerox, Google are other exemplary fanciful trademarks. If you make it up, there is much less of a chance of infringing on someone else's existing mark and you've got a very strong case against anyone who tries to copy you later on. Yikes. So that's a ton of information, but we can sum it all up in a handful of naming takeaways. Do your homework, understand what trademarks are used and registered in your area of business and avoid picking something similar. Number two, stay away from names that are similar to famous marks regardless of the industry. And number three, pass on names that are fundamentally descriptive, so try to do without place names, colors or other adjectives. Number four, make it up. The more unique your trademark is, the stronger your chances for building an exclusive customer recognition and the easier it will be to protect your brand. And last but not least, number five, stay vigilant for copycats. You know, really be prepared to enforce your rights to the name that you choose. All right guys, so this was a pleasure. I hope you learned a thing or two about trademarks. If you want to start protecting your brand with trademark registration and monitoring, or just continue learning, stop on by trademark.com thanks again for joining me today.

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Com sxm loved this episode by Ali Smith. If you want to learn more, head on over to Trademark.com but I can tell you firsthand. When we named our software business Webinar Ninja, we thought long and hard about the name. We trademarked it and we also like to play on the Ninja theme so people can remember our name easily. Now, there are a few other competitive products in our field that have the word webinar in it, but not Ninja, and that's why we emphasize the Ninja part and try to have fun with it. Also, we have the word webinar in our name because it's descriptive and it's great for SEO when people are searching for webinar solutions. Having said that, when it comes to our logo, we actually had a run in with a company that basically stole our logo. It's very, very similar. Luckily, they're not in the same market as us. They don't actually have the same solutions. They're not a competitor. So it's really not worth us going after them and asking to change everything and paying all the legal fees and all that kind of stuff if it really doesn't hurt our brand in any way. Now, if a competitor did that, that's a different story. Well, I hope you got a lot out of today's lesson. If you love this podcast, you can let us know in an iTunes rating and review. We read every single review and also lets others know what you love about the show so they can subscribe and listen to the podcast as well. Don't forget to hit that subscribe button right now so you don't miss a beat. So when the next episode comes out, it's right on your device. You can also support us by supporting our sponsors. You let them know that, hey, we love the show and appreciate their support. Before I go, I want to leave you with this. I love the idea that Alli gives where you make up a word like Haagen does. Making up a word differentiates you and makes sure that there's no confusion about who you are. And if there's other brands using that name or other businesses using that name, it's not a common term. I think that's a brilliant idea and if I were to start a new business, I'd probably do that. Thank you so much for listening and I'll check you in tomorrow's episode. I'll see you then. Take care.

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