Finding a Brand Name is Interesting, Facing a Lawsuit is Damaging

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When applying for getting a trademark under the USPTO, people are advised by attorneys and counseling companies to choose very carefully that name, logo or descriptive term, not only because they can face denial from the authorities, but because some day, they can look into the angry eyes of a giant corporation and lose everything in the name of trademark infringements.

The world has been witness to major legal battles between small businesses and world-known brands (Facebook versus Teachbook, for instance), between celebrities and press companies (the freshest case is Oprah winning over O Magazine last year), and between individuals and private companies (Microsoft versus MikeRoweSoft was gigantic and aggressive back then).

Sometimes these trials went on forever. Sometimes it is not only about using the same name or a similar name, but a word / phrase (see Dave Hester versus rapper Trey Songz over the word Yuuup) and even a combination of Greek letters (see the 2007 joint lawsuit filed by 33 national and international Greek letters organizations against six private companies) that can lead a person or a business to take a seat on the defendants’ bench.

Some current legal clarifications are in order

Under USPTO rules and regulations, you are allowed to trademark your own name, if you meet some criteria, of course. However, experts warn about not being able to trademark a celebrity name such as Celine Dion, even if you are called Celine Dion.

So what was with Starbucks going after Sam Bucks Coffee Shop almost ten years ago? The giant company pushed owner Sam Buck Lundberg into changing her company’s name, after a legal battle that took almost 4 years, following the owner’s refusal to positively respond to Starbuck’s cease – and – deceit letter and asking the corporation a sum 120% higher than the one proposed by the company to compensate for her troubles. Under certain circumstances, using a name that can produce harm to an already established company may lead to a legal battle few small business owners can afford.

What about using trademarks that fall into public domain’s category?

This is the case of using Greek letters to trademark your business. The situation is both simple and complicated in the same time, as Greek letters are, logically, of public domain, so you should use them to brand a new business or use them as logo. However, the complicated part comes in when you don’t take into account the fact that there are numerous fraternities and sororities that already use combinations of Greek letters and you can receive someday a cease – and – deceit letter from one of them, or all of them, telling you that some Greek letters are forbidden for you to use. In 2007 there was a major case involving a joint lawsuit against six private companies, and in 2012, a woman stamping Greek letters on hand – made jewelry received a disturbing message from an association of Greek letters companies asking her to stop advertising and selling her jewelry. The moral of this story is that before considering it very cool to trademark your own bakery under the name of “Alpha Pi”, make sure you get more information about these matters and consult with your attorney in order get approval to use the letters combination.

Acronyms, a pain you get used to

While few people could mistake Dolce & Gabbana for Doughnuts & Gingerbread, when you take the acronyms and look at them, it may not be enough for a lawsuit, but for some real troubled times coming your way, especially if the big brand decides to come after your small brand. It was the case with the International House of Pancakes that had some legal battles with the International House of Prayer. What had in common a famous restaurant chain and a church, few people realized back then, but the issue kept the headlines for quite a while. Even if the House of Pancakes dropped the charges on the House of Prayer in 2010, it wasn’t an easy feat for either of them, even if it is said that the latter benefited from humongous amounts of free publicity.

All in all, the main idea is that when deciding for a brand name and filing a trademark submission, looking at all angles and studying all implications might be in your best interest. It is cheaper to get legal consultation before you jump the train than paying for a lawsuit a few years after.

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