Lesson: Trademarks with Ed Timberlake

Step #5 Borders: To register or not to register?

Often times when people say, “We want to get this trademarked,” they've already trademarked it, they are already using something as a trademark. The real question, a big part of it is, “Is that something that is something that we're likely to be able to get registered?” Honestly, for a lot of people, just as sort of a very practical business question, nto everybody needs to get their stuff registered. What the concerns are that might go along with using a particular thing as a trademark. But not everybody has a registration, not everybody requires a registration.

A classic example is a restaurant, like a local restaurant. A brick-and-mortar, one location restaurant has a very different set of factors that would make it a good idea or not much of a priority to try and get whatever they are using as a trademark through the registration process. There is very little likelihood that somebody is going to keep coming to your restaurant, and then one day on the way to your restaurant see another restaurant on the same block with a very similar name and be like, “I don't know which restaurant I'm in,” so you're going to lose a lot of business because people won't know where they are.

I think in that kind of setting, the concerns of is a registration something that's really a priority in terms of a business move, it probably wouldn't be a very high priority. On the other hand, if your visibility depends on being visible everywhere, if you're primarily selling stuff online for instance, then you're immediately going out into the field of everybody, everywhere. If that's the case, then you’ve got very different factors to keep in mind.

If people are just going to Google you and you are depending on people getting to you simply by looking you up online, then it might be a higher priority to go off in a different direction, and then once you feel like you are in a space where there is some space around you, then a registration becomes . . . In that setting, it might be much more important early on to consider, “Is this is a trademark that's good for our company, and is it something that we can get registered?”

It's a very uncomfortable conversation to have with somebody when they come in and they say, “We've got a trademark, we've got a business. We are doing well and we are getting bigger,” only then to say, "Okay, but you're not going to be able to go . . .” For these various reasons, once you vet that name, you find out there are some other people out there that as soon as they find out about you are going to clobber you. That's not a fun conversation to have, so doing the research early on.

It's a pretty arcane field, but it's not completely unintelligible. If you are looking to start up a business or you are considering a name you can do a bunch of the research yourself. Unfortunately, the problem is that if you just Google whatever you've got, there are a million other, everythings out there. Knowing what factors will make your search results more or less relevant is kind of the stuff that you just learn by doing it a lot.

An interesting aspect of trademarks and the way it grew up, the way the trademark laws are developed is that at certain points businesses just aren't going to bump into each other. I think that's one reason, like for instance, a local restaurant here in town, I think I was looking up recently like the Oakwood Cafe, I think there is an Oakwood Cafe in Raleigh. There is probably an Oakwood Cafe in every other city in America, and there is not going to be much likelihood that they are going to bump into each other. They are not going to really want to hassle each other that all much because each one is just serving people on that block and people aren't likely to get confused about them.

Similarly with trademarks, there is also this idea that if somebody is using something as a trademark, the idea of having a symbol that you joined to some stuff, if you join a very similar symbol but to some very different stuff, then often times you can have similar looking things coexisting out in the world. In the scheme of trademark registration, it's generally not a problem if you are doing something completely far afield from what somebody else is doing. If one person has a restaurant where they use a mustache as their logo on their website, and then somebody else is making perfume where they have a little mustache that they attach to the bottle, you're probably not going to look at that and think, “Well, that perfume must have come from that restaurant,” so those can coexist.

I think that's another area where the idea of calling the stuff, likening any of the stuff to property, is not very helpful because the archetype of property ownership is being able to throw kids off your lawn, and that's not really how trademarks work. If you've got a mustache log registered for restaurant services, that doesn't necessarily give you the right to hassle somebody else who is using a three dimensional mustache on a perfume bottle. If they are consciously trying to harken your restaurant for whatever connection they would want to make between perfume and your restaurant, then that would be one thing, but just somebody else distinguishing themselves in their own field is not necessarily going to cause a problem.