In order to have success as an e-commerce business, it is important to adopt and develop a strong brand. However, if you have adopted a name for your business or products but have not conducted any trademark clearance searches or filed for federal trademarks, you’re treading into legally treacherous waters. Without a federally registered trademark, you are putting at risk all the equity that you are building into your brand.
To build the strongest brand possible, it’s important to carry out such tasks as conducting a trademark clearance search and obtaining federal trademark registration.
Now let’s take a look at the three most common trademark mistakes e-commerce business owners and marketers make, and talk about how you can avoid them.
#1 Choosing a name that isn’t unique
Many e-commerce businesses make the mistake of using a name that includes a superlative or descriptive term, which means you’ll be facing an uphill battle when it’s time to obtain trademark protection. For example, you may be able to entice customers to a business that makes, services and sells products for internet data centers if you come up with a company name like Best IDC Technologies or Complete IDC Solutions. But you will not qualify for any significant trademark protection on your company name—which will leave your business and your reputation wide open to the use of similar names by businesses across the street and across the globe.
To qualify for trademark protection for your business name, the name itself cannot be laudatory or merely descriptive. Instead, the name must be sufficiently unique to your business and cannot apply to any other business within your industry. Think about it this way: The only reason Steve Jobs was able to protect the “Apple” trademark within the computer industry was because there’s no inherent link between apples and computers, so the “Apple” name was unique to his brand. Had Jobs tried to start a juice line and named it “Apple” his trademark application would have been denied for being too generic.
For a better shot at obtaining trademark protection for your business name, focus on fanciful terms or words that are completely made up. And remember that some of today’s most-recognized brands—such as Kodak—were once just terms created out of thin air.
#2 Filing a trademark application for your logo
Certainly, your e-commerce brand logo is an important part of your visual marketing efforts. But when it comes time to register for trademark protection, we typically advise clients to focus their initial budget on protecting the business name itself. Why? Because protecting your name alone gives you the broadest level of protection around your name. If you apply for and receive registration for your brand logo, you only have federal protection for your brand when you are using that specific graphic combination.
Building on our example from earlier: Imagine you’ve developed an amazing logo for your IDC supply business, “VerdantTek,” that includes a bold green font with green grass blades growing out of the “V”. Your business files for and receives federal approval on your trademark application, so you’re good to go, right? Maybe not.
First of all, if you ever redesign your logo, the federal registration will be completely worthless. You would have to re-file the application to gain protection on the new logo. Moreover, if you need to enforce your trademark, an opposing party can point to the fact you do not own a federal registration on your name itself as a potential weakness in your case.
Ultimately, it is advisable to file a federal trademark application on your name and a separate application for your logo. While this will increase costs, it will also give you the best possible protection around your brand.
#3 Betting the whole brand on a DIY trademark search
Brainstorming business names is one of those fun projects that the whole office likes to get into—jotting down notes on a whiteboard and coming up with out-of-the-box ideas—and oftentimes someone will be assigned to quickly search on Google or even visit the United States Patent and Trademark Office website to see if a name that’s under consideration already has a trademark. But don’t make the mistake of thinking that any kind of search, even one your most talented technical folks can perform, is sufficient. Any attorney is capable of providing a professional search that will be much more comprehensive than what a layperson can do online.
Here’s why: Imagine that you’re launching a new wholesale lighting and power website and you’re certain that “Batteries & Bulbs, Etc” is a winner. A quick search on the USPTO site returns no results, leading you to believe that the name is available and, therefore, without potential trademark issues. But what your search didn’t show is that there is an existing trademark for a competing brand called “Batteries & Bulbs Etcetera” and if your business starts using the similar name using “Etc,” you’ll be infringing on their trademark—and could be setting yourself up for an expensive, time-consuming rebrand. Furthermore, you may even be responsible for paying damages to the other company.
Follow these tips, and your e-commerce business’ brand will be more likely to stand out in the marketplace and, if necessary, stand up in a court of law.
Josh Gerben, a trademark attorney, is founder and principal of the Gerben Law Firm, PLLC, a trademark registration law firm. He has represented clients in more than 5,000 trademark filings with the United States Patent and Trademark Office, and was named one of 2016’s Top 10 trademark filers in the US by World Trademark Review. Follow him on Twitter @JoshGerben.Favorite