Lesson: Trademarks with Ed Timberlake

Step #9 Cease & Desist: Caught red-handed

As a small business you probably don't have a lot of funds. If you have to pay a trademark lawyer any money, you probably want to pay them less money rather than a lot of money. Ideally you would want to pay a small amount of money and come away with something that is meaningful and useful as you go forward.

Unfortunately, what often happens is, a lot of times people will start their business, they will go along, they'll make a name for themselves, they get a certain amount of visibility. Then find out, wait a minute, there's somebody else already out there and maybe that person has the federal trademark registration and it's pretty much spot on and you just didn't know about it.

At that point you won't really only have bad options, because the reason why the other business thought it was worth going through the effort of getting a federal registration was because it would make it easier for them to make people like you go away at this point. At that point, the only option you really have often times is, you can spend a bunch of money on a trademark lawyer at that point and still walk away with none of the advantages that you had before.

You probably have to change your name, you may have to change your logo. At any rate, it is not your favorite day to come into your business and have to be dealing with some of these, which is why it's really, really important and really helpful to just pay a trademark lawyer a little bit of money very earlier on. As early as you possibly can before you get a domain to just say, what are the things we ought to know about. Because a competent trade mark lawyer ought to be able to tell you like, this is the kind of thing that you are talking about doing, this is where you are talking of doing it, and this is the kind of name that you have thought of using.

At that point, it's often relatively easy to find out about somebody else out there with the registration because the registration database is right there. Anybody is free to check the records at the trademark office. The trick of it is knowing what to look for and knowing which things are irrelevant and which things are relevant. This is where its very helpful to have a lawyer involved.

But if you are in the unfortunate space of "I have been trying to do this thing out in the world, I'm actually doing a little bit of business," you become visible and then somebody lets you know that they got a registration.

First of all, it's not the end of the world. Secondly, something to know just about style of legal writing that you're likely to encounter, is that there may very well be things stated, and its typically called a cease and desist letters. Basically they want you to die. They want you to stop doing what you're doing, they want you to stop using that name.

It can sound very off-putting and that might not be the final word on the matter. If you get something like that, it's often worth it to contact a lawyer and just say, "Look can you get me a little bit of advice, I don't even know what our strategy now is. But I got this letter, can you look at it and just sort of assess where are we? Is this serious? Do we have to change our name?" And get that sort of assessment before you even decide what the next step is going to be.

If you get a little bit of advice and if it is the case that somebody else has a registration, its in same area and it's a clear case where you are not going to be able to go forward, also that may not be the end of the world. You can re-group. It's a no fun way to spend that time, it's a no fun way to go back and say, "Now we have to do the website, we have to re-do the domain."

Life will sometimes throw you some setbacks. You do not have the luxury of dwelling on it, because you have to keep the business going. You have to keep focused in whatever it is you are doing moving forward.

I can't imagine a case where someone will come along and say, "We have a registration therefore you cannot even operate in this space. You can't even have a business." You usually can pivot from doing what your business is under one name, to doing it under a different name, and continue on.

Then just the usual psychology things, consider it an opportunity, think of how you can learn from it. It's not a great way to have to spend that time and unfortunately it often involves some money. But you have to do it to straighten out.

But, if it underscores the need at that point, to vet whatever it is you that you are going to use going forward, whatever bond you're going to forge to have trademark rights going forward, then ultimately maybe you end up with a stronger trademark that's going to put you in a better situation in the long run.