BUSTED, Naming a new product? Be sure you do your homework.

Published on July 1, 2011

Don’t gamble when selecting a  name for your company, new  product...do your research!
Don’t gamble when selecting a name for your company, new product…do your research!

It all started six years ago, like any hot, fast growing company, we were super excited about getting our product out in the market and generating cash flow.

Our company, Aquatic Nutrition, Inc. was an up and coming business gaining market share and critical mass very quickly. Being our second business, (Blackwater Creek Koi Farms, Inc. being our first) we had a lot going for us: a staff of great people, loyal customers and 65 acres of koi farms that allowed us to test, evaluate, change and test again, our diets that were continuously being formulated to provide peak performance.

As the years went by, the business grew and grew. Customers spoke about our product on web forums, at koi club meetings and even at business trade shows. It was viral marketing before we had heard of the term. Then, the product started making a profit. The orders were rolling in and we questioned what to do with the profits? We decided to re-invest.

We printed flashy four-color brochures. We hired a high-end artist and printed a 14-color tee shirt design and kept on improving the diet. The black packaging with embossed gold foil lettering looked as good as the diet performed. Things again were fabulous. Sales increased and the company had made it as a who’s who in the water garden and koi industry.

Years went by and then…BAM. I get this letter from another koi food company called a “cease and desist.” What? Huh? What’s this all about?

Our product, a premium professional koi diet deserved a great name. We called it GOLD. The letter came from another manufacturer that stated GOLD was a registered trademark.

My research found that it was true. The other company owned the rights to the word “gold” regardless of font style size or color in association to fish food.

This opened up a lot of work for us, and some frustration. The demand letter stated not only to stop using the word GOLD but also the following: a list of twelve demands including quantities of packaging produced, quantity of products sold, quantity listings of the magazines we advertised in, a letter to all our customers stating that we infringed on a trademark, a written plan to destroy all the packaging and a recall letter to all distributors and customers, and so forth.

Ok, so I did some research. I found eight other fish foods that contained the word gold in the name. So being the reasonable person I am, I called the owner of the trademark and pled my case. Surely we could use the word as well??? The answer was NO.

So we changed our packaging (**researching prior to changing**). And business goes on with this koi food called GOLD-N. (The N stands for “not the other guy’s food.”)

So how can all of this be avoided? Do your homework. Who would think that a common word such as GOLD could have a trademark? Apparently I should of thought about it.

**So what exactly is a trademark or a copyright?**

A **trademark** is a word, phrase, symbol, or design, or a combination thereof that identifies and distinguishes the source of the goods of one party from those of others. A trademark typically protects brand names and logos used on goods and services. A **copyright** protects an original artistic or literary work.

**Is registration of my mark required?**

No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several advantages, including: Public notice of your claim of ownership of the mark;and a lot of other items. And the ability to bring an action concerning the mark in federal court.

**When can I use the trademark symbols TM, SM, and ®?**

If you claim rights to use a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol “®” after the USPTO *actually registers a mark,* and **not** while an application is pending. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. Note: Several foreign countries use ® to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.

The US Trademark and patent office has a website where various types of searches can be done for words and phrases.

The law is fairly straight forward. If you are the first to commercially use a word or phrase for a specific product or concept, then you have the right to apply for trademark protection from that time on. Some words are easier to trademark than others such as Apple (a computer company because although apple is a common word, it is not a common word for a computer company. You would not be allowed to trademark the word apple for a fruit because it has widespread use).

DASANI is a great word for bottled water because it truly is a made up word with no prior meaning. Although I would not recommend calling your koi food Dasani or Apple. (grin)

There is also the law of “genericity.” This is basically when a word is used so much that the word no longer carries trademark protection such as the word “Thermos.” You grab a thermos to keep your coffee hot while traveling, not an “insulated hot beverage holding device.”

You can trademark a sign such as a silhouette of a famous mouse from Orlando or other self generated designs as well.

**So how do you protect your trademark?** One requirement we see the most is of the capital “R” inside of the circle. ® That symbolizes the mark as a registered trademark.

**So what does it cost?** Filing fees are around $500 and do not include private attorney fees and other associated costs.

A great place to get a lot of information is at

http://www.uspto.gov/trademarks/basics/ BasicFacts_with_correct_links.pdf

Yes, it’s a long web address but well worth the information. (Or you can use http://1.usa.gov/k8xQ8b)

All of this could have been avoided by our company if we had started using the name a year earlier or done our homework to choose a name not already trademarked.

Good luck with your business and products. I wish you the best of business this year. – Joe Pawlak

Kloubec Koi Farm

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