Now I’m not a lawyer (thank God) so I’m not certified to give legal advice. You can go to the U.S. government trademark website for help. But what you are about to hear are real life stories where trademark rights were not secured. In each case, someone paid a pretty penny and much consternation resolving the issues. http://www.uspto.gov/trademark
TRADEMARK USAGE STORY #1
DUE DILIGENCE IS THE FIRST STEP IN SECURING BRANDING.
The first story goes like this. Some years back while my CPA wife was enrolled in one of her annual CPE courses, she sat under a speaker who killing time told this story about the value of owning a trademark.
The Astrodome which opened in 1965 as Harris County Domed Stadium, was the brainchild of former Houston mayor Roy Hofheinz. In the process of establishing his empire and securing the “Astros” brand, Hofheinz raced around threatening legal action against entities using the name “Astros” in their product offerings. Soon he came upon a small Houston burger joint that had been serving Astro Burgers many years before the Astrodome was even a gleam in Hofheinz’s eye. Because the small burger shop could show earlier use of the trademark, Hofheinz had to purchase the rights to the name from them or he’d be on the bullied end of the stick. http://www.texasmonthly.com/articles/doomed-dome/
Concerning “First Usage” the Leading-Edge Law Group, PLC says this on their website:
MAKE CERTAIN YOU ARE FIRST.
“Before you commit to a trademark, hire an attorney to perform clearance research to make certain you will be the first person to use it for the same or similar goods or services. It would be a shame for you to invest money and effort to establish a trademark that someone else could force you to change later.”
http://www.leadingedgelaw.com/preserve-evidence-of-first-use-of-your-trademark/
TRADEMARK USAGE STORY #2
HAVING AN INC. ON THE END OF YOUR NAME IS NOT ENOUGH TO SECURE BRAND OWNERSHIP.
Houston based Luther’s BBQ was no small venue in the 1990s with 21 locations serving over 6 million guests a year. Luther’s had great locations, the best BBQ in the world and an exceptionally smart owner, Mike Jolley. When our ad agency retained them as a client we inherited their logo as well as their slogan. Years have passed, but it went something like, “The best restaurant in your neighborhood.”
National behemoth restaurant chain, Applebee’s International, Inc. had a very similar “neighborhood” slogan. They forced Luther’s to cease and desist usage. Compliance with the legal directive meant expensive edits to TV, radio, print, signage etc. on the part of Luther’s. Money in the agency’s pocket, but one doesn’t want to make it that way.
The situation could easily have been avoided with a sound investment upfront in trademark search.
TRADEMARK USAGE STORY #3
IN THESE DAYS OF GOOGLE KEYWORD SEARCHES, UNSECURED TRADEMARK USAGE CAN BE EXPOSED IN A NANO SECOND.
In the small Texas hill country town of Kerrville a solid business concept was developed and christened “Hometown Hero”. ‘The owners came to Lamb Creek to design the new corporate logo, website and card. We performed a simple search online and found another nearly identical discount card entity in California called by the same name. Wise still, the Hometown Hero card in California had been in business longer. How crazy is that?
Because the local Kerrville outfit serviced customers online as well, I warned that the name would quickly become confusing to customers. Worse yet, the local Hometown Hero Card could potentially be subjecting themselves to legal action if they did not change their name. Sound counsel was ignored under the mistaken belief that the California outfit was so far away that there wasn’t any conflict. So, we pressed on and created a logo and branding with the identical name. Years went by and the prophetic words came true. The name confusion forced the local company to change the name to “The Hero Card”. Back they came for a new logo iteration.
There is value in an initial online search to see if another entity is using the name or slogan. But just because you don’t find one that is has the same product or service offering isn’t a guarantee there isn’t one that exists.
And the stories roll on. We've all heard them. Some of us have lived through them many times with clients. Don’t just search GoDaddy to see if the URL is available. Use a real trademark lawyer.
Guts and truth. That’s how you build a world-class brand.