Here's my experience.
When I first looked into it back in 2003 and saw how
expensive a federal trademark was, I thought, “The name of my publishing
company is a Hebrew word, and would never be associated with books. So why pay
the hundreds of dollars it would cost?” My company name was at the top of the
first page on Google. (I know—I checked page rankings frequently.) Why worry?
Fast forward two years. A young Jewish teen in another state
decided to start a magazine. She played around with names and designs. If she
Googled (or used any other search engine) the name she wanted, she would have
seen that there was already a publishing company with that name. Her magazine
name was the same name as my company, except I had “publishing” at the end.
As soon as I found out about this magazine, I emailed her. I
told her who I was and that I had a book publishing company by the same name. I
thought she would react with an “Oops, the name I chose is taken!” But she
didn’t. And she had far deeper pockets that could defend her than I did.
When I investigated further, I was told that book publishing
and magazine publishing were considered different businesses and not easily
confused in the marketplace. I could hire an attorney (with money I didn’t
have) and try to intimidate her into changing her name, or I could coexist.
I chose the latter, and we coexisted for a while. But imagine
my horror when I found out (through Google Alerts) that her magazine company
had created an umbrella “media corporation” by the same name and was now going
to publish books.
This time, I sucked it up and called an attorney. Even
though I hadn’t registered my company name as a trademark, I had clearly used
it first in commerce, which gave me some legal protection. My attorney talked
to their attorney and they changed the name of their book publishing arm. But
in all their marketing materials, and on the copyright page, they added “an
imprint of ——— Media, Inc.” Legally, they were allowed, because the media
corporation was not, itself, a publishing company.
Publishing Jewish books is a niche, and it didn’t take long
before there was mass confusion about which company was which, and who did what
book. With the advice of a couple of attorneys, who thankfully talked to me at
some length without charge, I learned that at this point, I had three choices:
change my company name, take the other company to court, or agree to coexist.
The first choice would require new everything: website,
business cards, logo, print runs with the new name and logo, tax ID number,
bank account, and so on. The second choice could easily run me $75,000 and I
had a 50% chance of winning, in part because we had coexisted initially
(appearing that I was okay with their use of the name). The third choice was
not an option. Been there, done that, got the t-shirt.
So I did a ton of research. I sought input from others on
the new name. I spent countless hours on the Internet, searching trademarks and
each state’s and international business records to make sure I didn’t take
someone else’s name. When I discovered that the domain name was available, I
registered all the extensions. I built a new website, created a new logo, and
set about building a new identity.
And one of my first steps was to register the new name as a
trademark. It was expensive because I registered first as an “intent to use,” then
had to wait for approval, an opportunity for opposition, and then had to file a
“statement of use.” I registered in three different classes, which includes not
only book publishing, but magazines, gift books, cook books, audio books,
ebooks, and some weird stuff like printing presses, typewriters, paint brushes,
and vending machines.
As of the end of April 2012, the trademark was approved and
registration was final. Total fees to the United States Patent and Trademark
Office: $1,550. Total cost for domain registration, business cards, corporation
creation, custom website, and other new identity aspects: $766.60. Knowing my
business identity is safe: priceless.
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