No launch is worth a $120k+ trademark infringement lawsuit…
Hello from Sedona! Still here, at least for a bit. Did you know that it can snow in Arizona? Left Montana in search of sun and warmth and got more snow. 🤦🏻♀️ At some point, I’ll share all the woo woo stuff I’ve been doing since I got here. 😉
Anyway, new year, new launches. Love seeing so many business owners launching new offers, but the mistakes I’m seeing (beyond business owners putting out offers without contracts) is launching without first clearing the name to ensure they can actually use it legally.
Clearing the name
What do I mean about clearing the name? If a name is trademarked, that means no one else can use that name or anything confusingly similar to that name in the same industry. Practically speaking, this means that if someone has trademarked a name for their group program, and you want to use a name that has the same words but in a different formation, or a different spelling of the same words, or mostly the same name, for your course or your coaching, you’re barred. And if you go ahead and use the name, you’re risking trademark infringement, which at an absolute minimum means a cease and a desist and a complete rebrand (but can also mean a very, very expensive lawsuit…$120k-750k+ on average 🙈).
Different offer, still trademark infringement!
Most business owners don’t know this, but courses, coaching, live programs, etc? They’re all under the same trademark class of goods or services. So, say someone has trademarked a name in that class for their course. Even though you might be launching a group program, doing a paid intensive, consulting or something similar, and have no desire to launch a course, it’s still in the same class according to the Trademark Office (and FYI, classes are the same globally. I’m speaking about U.S. trademarks here, and different countries have different laws and procedures, but the classes of services are the same, so the same principle applies), so if you launch with the registered name, you’re in trademark infringement. And remember what I said about “confusingly similar?” The closer your offer to the trademarked brand, the more leeway the registered brand has as far as what is considered infringement. Courts have found the following to be too similar:
- Magnavox (sound equipment) vs. Multivox (musical instruments)
- Hpnotiq (liqueur) vs. Hopnotic (beer)
- Mr. Clean vs. Mr. Rust vs. Mr. Stain (all cleaning products)
- Canya (soft drinks) vs. Cana (frozen fruit and vegetable juices)
- Seycos (watches) vs. Seiko (watches and clocks)
- Freddoccino (coffee drink by a NY cafe) vs. Frappuccino (Starbucks owned)
I never want to fear monger, but trademark infringement is very real. Hopefully, y’all know me well enough to know I’m not going to exaggerate to sell trademarks 🤦🏻♀️ Will leave that to the bro marketers. There are countless software programs available to lawyers now that scour the internet to find instances of names (or similar names) being used by other businesses. It’s easier than ever to police trademark infringement.
What can you do now?
So what can you do before your launch? I have a free trademark checklist on the Resources page that will help you do the bare minimum, but there’s only so much I can do in a broad checklist. There’s unfortunately a ton of subjective nuance to trademarking, and so much of determining whether a brand is infringing on another or potentially infringing is a judgment call based on years of experience and expertise. But the checklist is a great start if budget is an issue.
My recommendation is to work with me (or another experienced lawyer you trust!) 1:1 to trademark. I’ll clear the name, and if it raises any red flags or I think there could be hurdles to successful trademarking, we can work together to tweak the name to something you love, and then I trademark it. Click here for more info on the process and investment and to go ahead and get started today, or just head to the Trademarks page. The trademark process is taking 14 months+ because the TM Office is so backlogged, so the sooner we start, the better.
If you’re not ready to trademark yet, but want to ensure you can use the name you’re considering, and want my assessment on likelihood of successful registration when you’re ready, consider a Trademark Clearance Search. This is $629 and when you’re ready to trademark, we deduct what you already paid from the overall investment. Email me back through the Contact form (located in the footer here). I don’t have it on my Trademarks page.