A North Face By Any Other Name Would Smell As Sweet….
I just came across a great blog post by a fellow attorney, J. Michael Hurst at Keating Muething & Klekamp PLLC. Apparently, 19-year old Jimmy Winkelmann created a company called The South Butt LLC, which was meant as a parody of The North Face.
Here are the two logos at issue:
Apparently, Jimmy has a great sense of humor and set up his company to sell some t-shirts and hopefully raise money to cover his college tuition (he did end up raising something like $100,000, according to Hurst). I love this disclaimer on his website:
We are not in any fashion related to nor do we want to be confused with The North Face Apparel Corp. or its products sold under “The North Face” brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.
(Sound of author trying to compose herself after period of robust laughter)
Anyhoo….long story short, management at The North Face failed to see the humor in this situation (or apparently the difference between a face and a…. bottom) and actually slapped Winkelmann with an expensive trademark infringement lawsuit.
Hurst’s post does a great job of analyzing what the North Face would have to establish to prevail on their claim (something Hurst doesn’t think they will succeed in doing – and I agree with him).
But this does bring up a couple of really important points for those of us launching and running businesses.
(1) Don’t Use A Name That Is Already In Use!
When you are choosing a name and logo for your company, make sure to research whether that name is in use already (particularly in the industry that your company will be in) and make sure you do not create a logo that looks like one from another company (as best as you can determine). You need to search your state records for names (usually the Secretary of State’s office will have the ability to search LLCs and Corporations in your state; also search any other state in which you plan to do business now or in the future). Also search national records, such as the TESS at the US Patent and Trademark office. I also recommend doing a Google search for the name to see if the domain is taken (or any variation of it) and to see if anyone is already using that word or combination of words for their business already.
Right or wrong, big companies generally are not shy about enforcing their trademarks (as you can see in the North Face case) and you don’t want to end up getting a cease and desist letter from an in-house legal department just after you spent your last red-cent having your logo and branding designed.
If your name or logo could cause confusion between your company and one with an already established trademark, you could be found to be infringing on their trademark. If you are, you could be forced to change your name, logo, packaging and anything else that uses the infringing mark. If you have any market traction already, you would then have to rebuild your brand and lose the work already put into marketing the infringing name/brand/logo. Add to that potential money damages and attorneys fees, and not doing your homework about your trademarks becomes an expensive (and potentially fatal) detour for your business.
(2) Protect Your Own Trademarks!!
Once you are sure you aren’t at risk of infringing on someone else’s trademarks, make sure that you have properly trademarked your own logo, tag lines and even product names and packaging so that you have the ability to protect your intellectual property and branding if someone does attempt to infringe on your trademark in the future.
Generally, “use” of the trademark itself does give you some protection (use the ™ symbol as soon as you start using anything you want trademarked). That means, always include the symbol on your website, on all of your advertising, correspondence/emails with customers, and written materials at a minimum.
But the best way to protect yourself if to file with the US Patent and Trademark Office in order to have a “registered” trademark (at which point you use the symbol ®).
Of course, I recommend hiring a good lawyer for this, as the paperwork can be tricky and you want to make sure it is done right. However, there are services out there that can help you file your own paperwork, such as Legal Zoom, so you have that less expensive option.
Just don’t decide to NOT trademark your branding. That could be an expensive mistake if someone else decides to use your name, logo or a variation of your logo (deliberately or without knowledge of yours). If you don’t have a registered trademark, you might not be able to stop them from using it, you will have less protection under the law to go after them, and might even lose your right to use your own name or logo in the future.
I’ve glossed over this because it is really fairly complicated subject, so make sure you find someone knowledgeable in trademarks to help you navigate this process. (And now for the required disclaimer: this post is NOT intended to give legal advice, so seek your own independent counsel for that!)
And if you have any experience with trademarks for your business (positive or negative), or questions, we want to hear from you so make sure to post a comment below!
You can read all of Hurst’s post at the link below.
http://intellectual-property.kmklaw.com/Trademark-Parody
January 5th, 2010 at 5:06 pm
To a what level does constitute infringement. I would like to establish a business… say —ASP Design— there are several businesses that already use ASP design in their name or that it is their name. Are all these ASP design up there because the name is not exactly the same. For instance, “aspdesign.com” I think their actual name is “ASP Web” and not “ASPdesign” so, because little differences like this one can have a name that seemingly is the same but is not? What if my initials are ASP. Or is it that nobody is doing their job of protecting or researching the name. Try googling “ASPdesign” and you’ll see what I mean, Am I missing something.
What if ASP stands for something —different— and it’s used as regular copy vs. having a logo —obviously a logo that looks the same would be infringement—
Thank you
January 5th, 2010 at 5:46 pm
Thanks for your question, Alan.
Generally, generic terms are afforded no trademark protection, and I would venture to guess that ASP would likely fall into that category in the ASP design/web design industry. However, there is also a chance that Microsoft actually already has the trademark for that phrase, like they would for such words as “Windows,” “Excel”, or “Powerpoint.”
One word of caution: Don’t assume that there isn’t already a trademark for the term ASP just because other businesses are using it with abandon. They might be facing legal action in the future. Make sure to research it yourself to be sure there is no trademark in place if you plan to use the term.
Obviously, I can’t give you specific advice in this forum (and couldn’t even if you were my client without educating myself about your company and the industry you are in), but my recommendation would always be to choose a business name that is unique and not easily confused with other businesses. If other businesses are already using ASPdesign, then it waters down your brand to use the same term (and creates the chance for confusion for consumers).
I know you want to be found by people that are looking for your design services, but I would think you could use SEO and other inbound marketing techniques for that purpose, while still developing a unique name and brand that stands out in a crowded field. Just a thought! Best of luck to you!
January 5th, 2010 at 5:55 pm
Great post, Jessica! It’s so easy to overlook trademark issues, especially when you’re young and starting a new company and the excitement is greater than the due diligence. In my first business venture, I was lucky to have a smart attorney friend like you who kept me on track. I second your emotion.
On another note, the logo story caught my attention because I just finished reading a preview copy of a new book Built To Sell, which highlights a logo design business and why and how you should grow your company as if you’re going to sell it one day, even if you have no plans to do so. Trademarks do matter.
January 6th, 2010 at 12:58 am
Wow never heard about… As one man mentioned in his book all you need to start business is a great idea. Never mind if it is not your idea… Thanks for the post.
January 6th, 2010 at 11:24 am
Thanks, Kate! I appreciate your comment!
You are so right. Anyone building a business has to think about their intellectual property, including trademarks, as assets of the company. If you don’t protect them, your company might not be marketable if you want to sell it. You want to make sure you have buttoned down anything that is a part of your unique branding so that it is a protected asset. If your trademarks are at risk because you failed to register them, you could find that no one will buy your company.
The same holds true if you are looking for investors. In most cases, potential investors will want to see that you have taken appropriate steps to protect and secure your trademarks and other intellectual property before they will be willing to invest.
Clearly, I need to read Built To Sell (its written by John Warrillow, if anyone wants to find it)! It looks like just what I need as I head full speed into 2010!
Thanks for your comment and the recommendation!
January 7th, 2010 at 6:30 am
When I first saw Winkelmann’s mark, I thought it was The North Face mark. I’d bet that most people who see it would not bother to read the text because they think they already know what it says.
If North Face wants to protect their mark from being weakened, doesn’t that mean that they have to sue here? They did warn Winkelmann to stop, and he responded with a ridiculous offer. Winkelmann was basically asking for a lawsuit.
January 10th, 2010 at 5:40 pm
What exactly constitues doing business in other states? For example, if I start an LLC in Ohio which is a website that sells t-shirts, do I have to search every state in which a buyer might be from? Also, will my trademarked Ohio LLC be protected in other states as well?
January 12th, 2010 at 12:55 pm
So confusingly similar, it’s no wonder the whole concept was designed by a greenie! Further, there must have been some kind of malicious intent to try and pull this off, maybe an isolated bad customer service issue??? The North Face has spent decades creating value in their mark and here comes some punk trying to degrade them with a crap-load of dumb t-shirts. This may be equivalent in shamefulness to the production of pirated brands/goods in Asia. Shame on you, punk!
About North Face: I had a zero degree North Face goose-down bag that my father bought in 1978. Used it again after a long hiatus and found it needed re-lofting. Sent it to NF in 2004 and they re-lofted the old bag with 700-fill (very high quality) down for FREE…
January 12th, 2010 at 2:50 pm
Thanks everyone for the comments.
Ray, if you have a e-commerce website, then you are in essence selling on a national (and possibly international) level.
I can’t give you legal advice in this forum, as you know, but in order to protect yourself from some of the issues outlined in my post, conducting a 50-state search of trademarks would be wise (states have their own databases for trademarks that are separate from the US Patent and Trademark Office database). There are services that will do a 50-state search (or even a comprehensive national or international search) for you for a fee. I would think that paying for such a search could be the best money you will spend in the effort to protect your brand/trademarks.
The other option is do get on the secretary of state website for each state and do the search yourself for free. It isn’t hard to do, just time-consuming.
Whatever you do, keep good records of your due diligence efforts, just in case you end up in a dispute in the future (just keep a file with printouts of all of your research).
Hope that helps!
January 12th, 2010 at 7:33 pm
There is a cheaper way to establish limited trademark protection and let the world know that you are claiming trademark rights, file for a registration in the state where you are operating. All fifty states register trademarks. This creates a public record of your claim of first use, gives you protection in the state where you first operate, and is usually, depending on the state, faster and much cheaper than the USPTO. From there you can move forward with a federal mark as you venture across state lines and have the money and time to get the application processed.
January 18th, 2010 at 3:20 am
I hoping you keep updating.
January 11th, 2011 at 2:56 am
The other option is do get on the secretary of state website for each state and do the search yourself for free. It isn’t hard to do, just time-consuming.
May 13th, 2011 at 3:38 am
Wow that was odd. I just wrote an extremely long comment but after I clicked submit my comment didn’t appear. Grrrr… well I’m not writing all that over again. Anyway, just wanted to say wonderful blog!
January 29th, 2012 at 8:52 am
feetRangeCanada America Kamchatka Peninsula eastern China and JapanCanadian GeeseFew spectaclesEurope Goose Yorkville Parka Straight down Cover Brown essentially low levels of greenbacks normally acquirebest top quality canada goose trillium parka low costCanada goose down canada goose jackets jacket winterproven for the glaciers in the arctic by native northern peoples and perfected for Antarctic expeditions tocomponents with the United states throughout the winterThe western population is discovered together the coasts canada goose toronto you might consider the synthetic stuffed or option down comforterWhatever your alternative you may be happydischarged from the room station negative two kilometers into the ladies put on thick coats carrying featherto leak around the outer layer from the coatWhen it lets you do this sort of it is likely to rapidly wind upmuch more wonderful than other makes of winter coatsNaturally canada goose label also will get excellent admiration andcoldest circumstances imaginableIf you read the info of Canada goose jacket there is undoubtedly an rising