One Crucial Legal Step to Take Before Launching Your Next Product

Key Takeaways

• While you can file an application for a trademark you haven't used publicly yet, you won't receive a registration certificate until you have proof that you're using it with a good or service that is available to the public
• Filing your trademark application saves your spot in line - anyone who files after you will have to wait until your mark is either registered or rejected to have their application reviewed
• You have to have a good faith intention to use your mark within a year of filing your application. That means that idea of someone else seeing your name and then rushing to file first doesn't hold water (unless they already were using it, in which case it's totally their right)

Resources Mentioned

• Watch the free masterclass
• Book a Trademark Consultation Call to get started on the trademark registration process
• Follow Amy on Instagram @artfulcontracts

Next Steps

Thank you so much for listening! If you enjoyed this episode, please reach out and let me know by sending me a DM on Instagram @artfulcontracts

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Episode Transcript

Today, I want to talk about some of the strategy that can go into the trademark process. And more specifically, some of the benefits of running a trademark search while you're in the ideation process for a new product line or a new business. Hey, I'm Amy Nesheim, licensed attorney for online business owners and founder of my own business, Artful Contracts. You're listening to Legal Made Easy, the show that makes the legal aspects of online business easy to understand and implement so you can grow your business with confidence knowing you've got it all covered. Let's dive in.

I've seen a lot of business owners, especially service-based business owners and coaches who don't put a name on their business when they're first starting out. They just go by their own name because they are the face of their brand, and that totally makes sense. But once they get more established, they start to put more thought into the branding around new things that they release: a new product line, a new course, a podcast, a new service offering, or even a tagline that they use across their branding. And involving a trademark attorney, or at least considering the implications of your naming choice at that point on the trademark side of things, is really important, especially for established business owners who are doing something new, whether it's a new business or a new line within their existing business.

So here's a little story to help you see what I mean. I had a client who I have a client who's a serial entrepreneur. He has a few different pots burning at any given moment. So he was developing a new service that he wanted to launch and playing around with a few ideas for names. This was going to be a web-based service, so he had to pour some serious money into the development of it before he could launch it. And so that means that it had to be right as soon as it went out. So he wanted to make sure that from the beginning he had a name that was going to be strong, reflective of his brand, easy to recognize, and unique.

So while he was still in the development side of this project, he came to me and wanted to run some searches for potential names for this thing. He hadn't named it yet, but he had a few in mind. And so he wanted to run searches on his favorite to help him in a strategic choice around which name would be the most successful. So which one he could own, which one he would actually succeed in getting a trademark registration once he was ready for that. And then beyond that, these searches actually turned up information for us that helped him make a better choice.

So here's what happened: we ran the search on his favorite name. And when I run a search, I tell the software, I have special software that I use, and I tell the software to search within certain categories and give it keywords around the industry that we're searching in. So I ran the search and his particular name was not taken. It was a two-word name. Let's so that I can explain this clearly, let's say that it was Legacy Advanced was the name of this program he was developing. So that's two words, Legacy Advanced. That's not the actual name, but for ease of explanation.

So I ran the search on this phrase, Legacy Advanced, for his niche industry, for his service, for the program that he was developing, and used keywords to narrow down his specific industry. And what we found was that his specific phrase was available. We could have registered it. But what we also learned is that one of the two words in his phrase was super common in his niche. There were lots of registrations with the word legacy, just with something else attached on the end. So let's say Legacy Plus and Legacy Professionals International and whatever combination you can think of, legacy with a bunch of other words, or create your legacy, leaving a legacy. In his specific niche, one of the words in his phrase was super common.

So that tells me a few things. One, it totally makes sense that he chose this phrase because it was something that his audience was familiar with, would associate with his type of service, and made sense for his industry. That's good. But on the other hand, it also means that he could be easily confused with some other company that already uses legacy combined with something else. So there's two negatives there. One, that could mean that there's a higher risk that a trademark application would not go through because an office examiner could say, you know, there's already Legacy Pro, so Legacy Advanced is not that different. Because the word advanced could mean, you know, if you had a brand that used Legacy, Legacy Advanced could just be an offshoot of that brand. And that could cause confusion for customers. So that would be a potential roadblock to the application.

Beyond that, that's a problem for his brand recognition. If there's too many companies out there that already use part of his phrase, specifically in his niche, that's not a strong brand. So ultimately, he decided to go back to the drawing board on that name. The search provided valuable information for him and told him that he was in the right direction because he was thinking of things that other people in his industry used and recognized already, but it wasn't a unique enough brand. And he wanted something that people would see and immediately think of his company.

Now I have another client who had a similar experience, but we came away with different takeaways. So in that case, this other client was a coach who was doing some rebranding and then had other areas that were kind of tangentially related, but additional product lines beyond coaching that he was thinking about expanding into in the future. So when we did the search for the business name he wanted to use going forward, it was completely available in coaching. In the classes that were related to his coaching services, we felt very good about moving forward with the application.

In the classes that are related to the future product lines that he's thinking about, there was a lot more that could potentially come up as conflicts. The identical phrase wasn't registered, but other phrases that had a similar connotation, a similar meaning were registered for this one product line. Now remember, trademark conflicts don't just come up if something is identical. It comes up if something sounds the same or gives the same commercial impression or has the same meaning. So just because the phrasing is different, if something has the same meaning, that could still potentially be a conflict.

So what we took away from that search was that this was a great phrase to use for coaching and the services around coaching. And it was also something that was popular in this other product line that he's planning on in the future. And that means that he needed to get in the door right away. Two things to remember here with trademark registrations, filing your application saves your spot in line so that if you're the first person to file on a phrase, then you have priority over someone who files a month after you or a year after you. This client wasn't ready to start this product line yet, but he had plans to do so within the next year or so. So we decided to do an intent to use application for this product line.

Now I talked last in the last episode about how intent-to-use applications are a tool, they're not a requirement. This is one of the situations where an intent-to-use application makes sense because it's a phrase that he's going to use with his coaching business that is already established, but it's a new product line. So he is applying intent to use in the one class that relates to the new product line. He doesn't need proof of concept for the overall business. He already has that and he feels confident that he's going to do this product line, but he also knows that it's a phrase that could be taken at any minute. So applying saves his spot in line. Even though he's not ready to launch that product yet, he is in the works with it. So he's still able to do that. And that search showed us that it was a risk. That if it was a phrase that had never been used in that particular product class before, we might have waited on filing the application. We might not have needed to do an intent to use now. We might have waited until he was closer to actually being able to launch the product. But because it was a phrase that was similar things were kind of used in that product area, we knew that there was potential that this phrase could be used there as well because it was a popular meaning in that specific class.

So, bottom line here, when you are developing something new, running a trademark search for a name you're thinking about or a name that you already use, but you have a new product line you want to branch into can be very helpful to help you strategize when is the right time to file your application, or is this even a good name? If it's too saturated in that market, if it's a name that the meaning has been used before, or a certain word out of that phrase has been used before, or frequently in that market, in that class, then maybe it's time to go back to the drawing board, or it tells you you have to file right away so that nobody else takes it.

If you want help strategizing with your brand name, if you are ready to own your brand and want to register your trademark, I have a few spots open in May for trademark registration clients. Head on over to artfulcontracts.com/trademarks for more information and to see how we can get started. Thanks so much for listening, and I'll be back in two weeks with the next episode.