Once you’ve decided on a name and have performed your diligence as described in my previous post ‘Be Creative!’, it’s time for you to take steps to protect your rights and prevent others from using your trademark. Below are some helpful hints for helping you protect your investment.
Let others know you are using a word, symbol, logo, or other identifier as a trademark. If the trademark is federally registered, you can mark your trademark with an encircled R (e.g., GOOGLE®). If your trademark is not federally registered, you can mark your trademark with a TM (trademark) or SM (service mark) (e.g., J.DouglasTM).
File applicable trademark applications
Trademark protection comes in several forms: common law protection, federal law protection, and/or state law protection. Common law trademark rights vest based on using a trademark in commerce. Common law trademark rights, however, have some limitations. Consider filing federal and/or state trademark applications. Federal registrations and/or state registrations grant trademark owners additional and/or alternative rights than those under the common law. Consult with an attorney about which application(s) is/are best for your business strategy.
Buy your domain name
An online presence is critical to the success of your business. Buy your domain name early.
Police your trademark
As a trademark owner (under common law, federal law, and/or state law), you have an obligation to take action to prevent others from using your name. If someone else is using your name, you have an obligation to put them on notice that you have rights in the name. How you go about providing this notice can vary depending on the sophistication of the other party and/or your relationship with the other party. Consult with an attorney for guidance in enforcing your rights.
Small business owners and large business owners alike have the obligation to take actions to prevent others from using their names. Many are surprised to learn that giant companies send cease and desist letters to and/or file lawsuits against small businesses. However, it is in giant companies’ best interests to take on cases against small businesses. Although harm caused by a small business may seem insignificant to a large, successful company, large companies must protect their trademarks and their reputation. Note, there are various ways to address this issue without seeming like a “bully,” but ultimately, the small business is likely going to have to change its name.
Similarly, many are surprised to learn that small businesses send cease and desist letters to and/or file lawsuits against other small businesses. However, not unlike the giant companies’ best interests to take on cases against small businesses, small businesses need to protect their trademarks and their reputation, too.
Think about it—once you’ve decided and invested on a name, do you want someone else who is in your line of business using your name? Probably not. Accordingly, you have a right—and an obligation—to take actions to prevent others from using your name. Don’t be afraid to assert your rights and consult with an attorney for guidance in enforcing your rights.
Fashion law is an ever emerging area of law that deals with the business problems of the fashion industry. The area of fashion law encompasses a breadth of legal disciplines including intellectual property, business, employment, regulatory, immigration, and zoning. Libby Zinke is an attorney at Lee & Hayes, PLLC. Her practice focuses primarily on intellectual property procurement and enforcement. Lee & Hayes is a full service law firm with nationally recognized corporate, litigation, and intellectual property attorneys who are well versed in addressing legal issues faced by fashion designers.
This blog post is intended for educational and informational purposes only and is not intended to provide specific legal advice. By reading this blog post, you understand that there is no attorney client relationship between you and the blog author. This information should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.