“All roads were leading us back to the blue box.”
Marka Hansen, President of Gap North America (October, 2010)
Back in 2010, when a fair few of you reading this were either in college or even high school, U.S. fashion retailing giant Gap, who actually hadn’t seen an in-store net profit for several years, decided to refresh their iconic brand image by altering their logo, hoping this would lead to a significant change in company fortunes.
Well, as any student knows, there are fails… and then there are FAILS. The enormous customer backlash, led through social media, resulted in Gap dropping the new multi-million dollar logo within a week, and this ill-thought out, failed marketing ploy ended up costing the company a cool $100 million. As one of my old college buddies used to repeatedly say after getting in trouble yet again for something or another, “Andy, honestly, it just seemed a good idea at the time.”
Allow me to introduce myself. My name is Andrew Macia, a successful digital marketing entrepreneur, with technology startups forming a high percentage of my ever-growing client list. The colossal subject of branding and its intelligent design is, understandably, close to my heart, every facet of which usually gets my undivided attention.
Recently, I thankfully had the opportunity to discuss at length the importance of branding legalities – in other words, trademarking and protecting your brand – with David N. Sharifi, a well-respected, experienced trademark lawyer for startups, based in Los Angeles, CA. As David told me:
“In the early stage of a technology startup, from idea to market research to product launch, the company name, or a brand name, enters the entrepreneur’s mind from a myriad of sources and inspiration. Soon after, navigating the complexities of trademark due diligence to select and adopt a brand name as the name of the product or service to be launched becomes critical.”
Here is the full, hugely enlightening interview – 10 essential questions for startup trademark attorney – a must-read for anyone themselves navigating the raw, forceful impetus (and possible pitfalls) of their own startup.
1. Is it a legal requirement or absolutely necessary for me to register my trademark?
In the U.S., filing for trademark registration at the federal or state level is not required to obtain trademark rights because of the long-standing tradition of recognizing common law trademarks. However, common law trademark rights require actual use in commerce, which generally requires a finished product or service, and the detailed requirements may slightly vary in each U.S. state. For technology startups that are pre-launch, they may not qualify for common law trademark protection, leaving the federal trademark registration system as the only option to reserve their trademark rights until they are launched. Federal trademark protection by filing an application in the United States Patent & Trademark Office (USPTO) is usually the best option regardless for nationwide protection, with the greatest legal advantages, even if common law requirements are already met.
2. What advice can you give about my choice of trademark?
I cannot give legal advice because this is just an informational interview, and readers should consult an experienced trademark attorney before relying on the information. Below are few general best practices for trademark selection, adoption, and legal protection in the United States:
Consider federal trademark registration as the best way to protect a trademark rather than relying on common law rights.
Timing is critical in U.S. Trademark Law. The first person or company to file for a trademark application, OR, the first person who establishes common law rights, has legal priority to the trademark.
Try to pick a uni…
