Lesson: Trademarks with Ed Timberlake

Step #2 Paper It: Know your rights

If you're doing anything out in the world, then you already have a trademark. If you're a business and you're doing something, then you really in a sense already have some sort of trademark. You have a name. Often you'll have some sort of logo or something like that that you're using. I think that's one thing that people miss often is the fact that they are already acquiring trademark rights in whatever they're using to identify themselves.

The trick there is that at that point you don't know the extent of your rights. If you haven't done any investigation, if you haven't really vetted what it is that you're going to be using, then you don't really know whether you're getting good rights. You don't know how broad your rights are going to be. You may just be ambling into an area where there are five other people also using that name. So you're getting some very small rights exactly where you are, but as soon as you try and get bigger or as soon as you grow into other areas, you're going to bump into these other people.

Rather than thinking of trademark as being an entirely separate process, like "Oh, I've got to wait. We'll do that later. You've got to talk to a lawyer about that," I think it's one of the very first things that you should be thinking about as a startup. In fact, it is one of the first things that startups are probably thinking about because they're coming up with names, they're coming up with logos.

Oftentimes these days when the issue arises, it's in the context of a domain. Somebody says, "Hey, I've got this idea. I want to call my company this. Oh no, that domain isn't available." Then you go and you sort of torture yourself, like "Okay, what domains are available. That's an awful domain but I guess we're called that now because we can get the domain." Then you amble into the marketplace with a company name and a trademark that you only chose based on the availability of a domain. Unfortunately, the availability of the domain has absolutely nothing whatsoever to do with whether that's going to be something that's effective for you as a trademark and whether somebody else already has better rights to that from a trademark standpoint.

I think if I could say one thing to startups about this, it's a very early thing that you need to be considering. A lot of the language that lawyers use, I think, is not very helpful for actual people out in the world. Lawyers often talk about selecting a trademark and doing a trademark search. That's fine. I understand what we mean when we say that, but I don't think you really want to think about it in terms of selecting. In my mind, when you say, "selecting a trademark," I always imagine a fancy waiter coming out with this big wine list. "Would you like to select one of the trademarks from our wine list?" "Yes, I'll take number seven.”

That's not at all how trademarks work. Trademarks are very active. You can't just select one. You really have to make them. You really have to create it.

Essentially there are three basic parts to a trademark. I call them the three S's of trademarks. You've got your symbol, which is the part that we all see. The symbol can be almost anything — a word or logo or word and a logo. It can we a sound. It can be a scent sometimes, so just anything that you fill into the symbol box. It takes the role of the symbol. Then you've got your stuff. You've got whatever your business is actually doing.

The active part of making a trademark is you've got to forge a bond between your symbol and your stuff in a way, you've got to use them together closely enough, often enough, so that people get that there's a connection between and they start associating that symbol with your stuff. Then the third S is just the source of the stuff. So you've got the symbol, you've got the stuff, and then you've got whatever your company is. Use the symbol with your stuff in a way that says, "This stuff came from this particular place."

I think the earlier you can start thinking about forging that bond, the better. Oftentimes people will come to me and say, “Okay, well, we just want to get this. We've got this thing and we just came up with it. We immediately want to just go and get it registered." That's fine, but going through the registration process is a little bit analogous to matrimony. Think about it as getting married. You don't necessarily want to marry the first person that you meet, and you don't necessarily want to marry somebody without vetting them a little bit, without knowing some of their background, without knowing their family context, their history.

I think trademarks are a little bit like that. Once you identify something, once you look like, "Okay, this is something I can really forge a bond with here," then a very big question is, "Is that somebody I want to take down the aisle? Is that a symbol that's going to work for us?" and that question has a lot of elements. On the one hand you've got the legal aspects of, "Is this something that the law is going to recognize and then help stake out this area for you?" but a giant other side is just the marketing aspect.

Often, an interesting but unfortunate thing for startups is often the legal principles say, "Go way over this way and you're safe from a legal standpoint for your trademark," but all the marketing principles say, "Go way over this way and that makes for good marketing." So you're getting pulled in these two opposite directions. So managing to forge a connection with your stuff for a symbol, for a word or logo or whatever it is, with something that also is fitting your business is just very difficult. There's not really a secret to coming up with a good trademark because what's going to make a good trademark for your business is different for every business.