—Linda McCulloch, President, Design That Works Communications Inc.
Long, long ago, in a galaxy far, far away… OK, seriously, back in 1999, I decided to make a quantum leap from successful freelance graphic designer to a REAL COMPANY. I began working with the Small Business Development Services advisors and formed a plan. I would incorporate in 2000, start expanding my client base (I bought out another designer’s client list and files), hire some interns, and launch my first website.
Creating and launching my first website was a huge undertaking and I realized that once our company was on the Internet we would be much more visible. So I decided to take a very big step for a very small business. I engaged the services of an intellectual property attorney to help me register my logo and name. My company name had originally been simply Design That Works. The Secretary of State in Georgia said it was too close to another design firm so I added the “Communications Inc.” Since our logo is a traffic sign, and the name of the company was considered too descriptive to register alone, we applied for the trademark registration as a combined mark and design.
Almost two long years later, I was able to put the ® on our logo and start using it everywhere. During the waiting period I had used the TM, because although we are a service business, the TM is more recognizable to my audience.
There was only one minor catch. When I initially launched our site, I of course tried to buy the URL “designthatworks.com” – but it was taken by a much larger design firm in the Northeast. Although they weren’t using it, they kept renewing it. I bought another name (greatdesignthatworks.com). Eventually I got tired of trying to get the preferred name (I never tried to buy it from the other design firm) and I gave up on it.
Now, fast forward to 2003. One day I decided to look up that URL again. Lo and behold, the other firm had relinquished it recently! Hurray! BUT, someone else had bought it. Oh nooooooo! That someone else turned out to be a young freelance graphic designer in a neighboring state. Only one border away in fact. And, she was using the URL as her main website address and her tagline. It was not her company name, but still…I had had Design That Works as a company name since 1989; many people and businesses here in Georgia knew who I was and knew my work. What if they started going to designthatworks.com and thought that was my company? Or, what if a prospective client heard about our work and tried to find us and that URL came up? How would they know they had the wrong company? I was pretty upset, so I called two different IP attorneys for their opinion. They both advised me to contact the other designer, explain the situation and tell her that she had the option of hiring her own attorney OR of giving up the URL and changing all her materials so that her marketing did not infringe upon our mark.
After several weeks of phone and email conversations in which the other designer did consult at least one attorney, she capitulated. She did not even ask me for compensation due to having to destroy or redo her materials. She only charged me what she had paid for the URL.
And that minimal fee is all I had to pay. I did not have to do anything else. Why? Because she had not taken the simple step of looking up “Design That Works” in the US Patent and Trademark Office. If she had, she would have seen that our company had the mark registered already and had been using it since 1989. It’s true that she was using it only as a tagline, whereas it is our formal company name and integral to our logo. But, as our attorneys pointed out, she was in the state next door, she was in the same business, and she was using our name as her web address.
To this day, we still use our old URL (greatdesignthatworks.com) because it is on so many printed materials and in so many links. However, we own designthatworks.com and our site is tied to that URL as well.
Over the years, I have successfully convinced two other freelance graphic designers to cease and desist using “Design That Works” in their marketing materials or on their websites. None of this has cost anything except my time (and theirs). They have all weighed the fact that we own the registered mark (regardless of the fact that we do not own the name itself but the name combined with the logo) and they have all decided to back away.
I became convinced of the high value of a registered mark years ago. The moral for me is twofold: Never assume that an available URL means you can give your company that same name. And, I know that in this supremely connected era, if someone can find you, they can copy your identity, steal your marketing ideas and plagiarize your mark and image. A registered mark is a great way to protect and add value to even a very small business. I have educated many of my small business clients about this, and several of them have pursued trademarks for their own businesses and products as a result. I will always be proud of the fact that I took that huge (to me) step and pursued our mark, which as I write this is in the process of being renewed for its second ten years.