This was a guest post written by Ryan Bernardo of Braun Legal. Follow Braun Legal here. Visit Braun Legal at BraunLegal.com.
The number of crowdfunded projects continues to grow each year. As crowdfunding grows, however, so do the number of legal issues associated with those projects, especially trademark conflicts and infringement claims. Starting a new campaign means you will be faced with a number of decisions, all of which need resolution before you can get your new campaign off the ground. During this process, choosing a name for your product is often considered a secondary issue, but it is one of the most common areas of trademark conflict in a campaign.
Deciding on the name of your new campaign and product should not be at the bottom of your priorities when working on your project. Choosing a name for your campaign can have many implications for your project once it goes live, and taking a few extra steps before you start your campaign may save you a world of legal headaches down the road.
1. So, you have the perfect name. Are you sure?
The name you choose for your product is referred to as your trademark and has the potential to be very valuable! When your campaign goes live, people will immediately start to associate your product with that name. You will be building brand recognition, along with your reputation, from the very first day. The brand recognition and reputation built during the campaign may be the reason a future consumer chooses your product over a competitor’s. Making the proper name choice before your campaign even starts means you will be building a valuable intellectual property portfolio from day one. It’s a very important decision.
It’s not just about building brand recognition and reputation though. There can also be real negative costs to you associated with the decision you make. A name choice that is made quickly or in an uninformed manner can potentially infringe another’s trademark rights, leaving you open to legal claims, costly litigation, and/or even having your campaign canceled. All of your hard work, marketing, and investment will be lost. Plus, those legal fees to defend yourself still have to be paid. All these potential headaches can be avoided, but you must choose a name wisely and do a little homework upfront. Start the process of picking your new name by creating a list of potential winners that you like.
General guidelines for making this list:
- Don’t pick a name that simply describes your project or product. If you’re making a new light bulb, don’t call it the “Super Bright Bulb.”
- Don’t pick a name that is trendy or common since too many people might already be using the same name.
- Check to see if the domain name is available. If not, it could indicate that someone else is already using the name.
- Do a quick search on major crowdfunding sites; does the product already exist with that exact name or a very similar one? Don’t use it.
2. Start with a general Internet search.
I am amazed at how many campaign starters simply skip this step. This is an easy and simple way to narrow down your list of top choices. Pick your favorite search engine, make a general search using the names you are thinking about, and look through the first few pages. If there are any glaring conflicts, or even some that you think could be conflicts, dump the name. Do not make the assumption that no one will notice that you are using the same or similar name as someone else. If you found a potential conflict with just a simple search, odds are the other owner can find you just as easily.
3. Check with the United States Patent and Trademark Office.
You now have a short list of potential names. Next, you will want to review registered trademarks and applications at the United States Patent and Trademark Office (USPTO). Using the USPTO’s trademark database, run a “Basic Word Mark Search” of each name you are considering. For example, you want to start a new campaign to make burger costumes and want to call it Bob’s Burgers Costumes. Running a search of the term “bobs burgers” will produce the following results:
In the search results you are concerned mainly with those lines marked “live” and any line with a “registration number.” In this case, you see that the name has already been registered by Twentieth Century Fox for exactly what you want to do; “Halloween costumes.” Check that name off your list and move on.
So what did this work get you? Once you have completed the above tasks, the names remaining on your list should have a significantly lower probability of inviting trademark infringement claims. Now you just have to pick the best one for you!
Of course this post is a very high level overview of the trademark search process, and there are many subtle nuances to trademark law. Additionally, some campaigns may implicate trademark issues at the state level, as well as internationally. It may be cost-effective for a competent trademark attorney to review more complex campaign names or projects for proper legal clearance before starting your campaign.
Ryan Bernardo is Chair of the Intellectual Property Practice Group at Braun Blaising McLaughlin & Smith, P.C. (BraunLegal), where he draws on his experience as an entrepreneur, IT consultant, and now intellectual property attorney to provide valuable legal insights on crowdfunding related matters. Ryan uses his experience to consult with campaign owners on a variety of legal matters related to launch, funding, and completion. The materials provided in this post are for informational purposes only and not for the purpose of providing legal advice. Please contact Ryan directly at Bernardo@braunlegal.com if you have specific legal questions regarding your situation.
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