The Presidents Club
It is a thing that often most entrepreneurs forget. It is not just about protecting your trade mark, but also making sure that you do not use someone else’s.
Let me begin with my own story as an example. In 2007 I embarked on a new project. I knew very well how important it was to get the naming right, have it registered and protected. Before coming up with a product or company name, we setup about doing a six months brain storming session, while working on the project in parallel.
We came up with hundreds of different names. Each time we searched the names in several search engines, checked the availability of the top level domain names, check against as many dictionaries as we could and also the trademark registries of US, Europe and Spain. Finally we settled for Urbytus. i) It was unique, ii) did not come up with any search results, iii) All top level domain extensions were free iv) it did not mean anything in any language of the countries that we were look to market our product in.
The same was repeated for another group of product names that we had come up with for our product range.
So far so good. We started with the first marketing campaigns; we had a unique name and enjoyed good ranking and publicity. However after a while we realised that we needed a different vehicle for finding our prospective audience. Our audience and clients being the presidents of communities (home owners associations). This exercise led us to the creation and presentation of “The 1st Presidents Forum” in May 2013, where we announced the inauguration of “The Presidents Club”. It all went well, we started getting members, setup an online forum and arranged for regular meetings. All well until it caught the eye of a copycat. Now copying is all OK and it happens all the time, but copying a name completely and adding the word “International” to the end of it was rather a surprise to us. So now we have a company with the tradename “The Presidents Club International” advertising with their tradename to a local audience, who now find themselves totally confused of what is going and who is who.
Is registering your tradename sufficient enough for one to get by and use it as a trademark that you have created and make it their own trademark? The answer is NO?
You can register your company name (tradename) more or less what you like. However this tradename does NOT warrant you the right to advertise it as your trademark. The tradename is what you use for legal purposes; such as communication with the Tax, Social Security, Banks, Invoicing, etc. However this tradename should not be confused with Trademark, which is any word, design, slogan, sound or symbol that serves to identify the source of goods or services (service mark). An article poste in the Business Law Post blogs, explains this issue in more details (http://www.businesslawpost.com/2010/12/trade-name-vs-trade-mark.html)
However you are now faced with a problem and the solution is claim your rights. If you had registered your trademark, then that should be an easy job and if you hadn’t done so, then you should do so immediately. Start the procedures for registering your trademark regardless. Once the registration is complete, you are now given access to this name and you can in court claim that you have and were the original user of the name and that your trademark and idea was copied at a later date. You will of course need to prove that you have used the trademark before and that you have enough documentation to prove it. The rest is for the judges to decide and enforce the law as per the blog, I have mentioned above. The trademark rules are pretty much the same worldwide.
While in US you may be able to claim damages of hundreds, thousands or millions, in Europe you have to prove your losses. This maybe rather difficult, but the upside is that the betraying part can be forced into paying for an advertising campaign that informs any and all clients about this misuse. This advertising campaign can be requested in all the media where the other party has advertised and tried to get customers and the attention of your audience and clients. So it is worthwhile pursuing the matter.