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How a Registered Trademark Protected My Small Business: A True Story

Posted in Guest Bloggers, Infringement, Trademarks

—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.

  • Scott Smith

    Linda, thanks for sharing such a good story. Luckily for you, you weren’t up against an uncooperative company with deep-pockets. Otherwise your happy story would have instead been a nightmare. I don’t know many designers who can afford legal battles costing 100s of thousands of dollars and drag on for many years. In other words, a company’s trademark rights are only as strong as their bank account.

  • Carl Vennitti

    Umm, Let’s see. Linda is from a galaxy far away and met Scott at the Restaurant at the End of the Universe (you gotta be over 40 to understand).
    Steve Baird makes the comment that one’s defense is another’s litigation. Is an aggressive defender an actual bully? What really constitutes a bully or bullying tactics?
    Here is a different perspective on Linda’s story: Successful business begins to acquire additional companies and increases revenues. The American Dream. The company is wanting an IP asset which is owned by a small regional company. Successful business hires a ‘team’ of lawyers. Phone calls, emails (probably a letter from an attorney as well) innundate the small regional company. This is starting to resemble actions of a collection agency. Small business succumbs to threats, whether real or implied and relinquishes the IP property.
    BAM!! Do we see aggresive defense tactics or bullying tactics? Linda squeezes a small company and Scott thinks she’s lucky?
    How about some of you ‘educated’ readers throw some thoughts in?

  • Maureen Veterano

    If you consider this an example of a trademark bully, then we are definitely working in different playgrounds…
    The author goes to great lengths to point out that the only “cost” to her was her time and the USPTO registration process. No litigation was filed, no cease and desist letters on BigLaw letterhead…Sounds to me like a great example of how the system can work under the right circumstances. I do have to agree with Scott however- often times, trademark rights are only as strong as the bank account used to enforce or defend them.
    Maureen Veterano

  • Thanks for the comments so far, Scott and Carl.
    To Scott’s point: Exactly the reason I did not try to get the URL from the much larger company in the northeast, as I assumed they had the aforementioned deep pockets, whereas I definitely did not. If I had been more savvy about URL purchasing at the time (remember this was a long time ago in internet years) I would have tracked that URL and snapped it up before the freelance designer in a neighboring state ever saw it. Live and learn!
    To Carl,
    I have not met Scott (yet) but would absolutely love to meet you and/or him at the Restaurant at the End of the Universe. And I would bring my own towel, of course! But to your point about bullying tactics:
    Ouch! I certainly did not intend this to be interpreted this way. I only wish my company was as large and powerful as you make it sound. Let me clarify a few things: I was only a tiny bit “larger” in size and revenue than the person whom I had to “bully” ‚Äì and the two lawyers I called were both colleagues and friends of mine as well as excellent IP attorneys, and they provided their advice to me pro bono as a favor. I was strongly advised by both attorneys to just call this designer up and explain the situation, my prior use of the mark, the fact that it was federally registered, and so on. There were never any threats on my part, nor were there any letters from any attorneys, as I tried very hard to avoid all that. Truthfully, I had more empathy for the designer than you may think, as I could easily envision myself in a similar situation.
    The attorneys also told me that I should prepare to offer the designer compensation for the fact that she would have to re-do her materials, if she should ask for that. Since I am also very small, as I mentioned more than once in the blog article, I could have compensated her but it would not have been easy for me to do so. I gave her plenty of time to talk to her own attorneys and they advised her that it would be easier AND in her best interest to capitulate.
    So, call it what you will, Carl. But the amount of time, energy, money and effort that I have invested in my mark in terms of collateral, website, and PR, is too valuable for me NOT to protect. And that, in my opinion was the point of the article. And also the point of pursuing a trademark registration in the first place.
    Linda McCulloch

  • Maureen, thank you for your on-target defense of my actions! I appreciate it.

  • Carl Vennitti

    Linda,
    Thank you for a much better explanation of your endeavors. For the countless people who do not comment on posts I had to take the devil’s advocate position. Being subjected to a very similar story line by a very large Opposer, what I do advocate is that we, the little people, need to stand firm in our rights to IP that we have acquired through all the proper means and stand firm against encroaching predators. Maybe some day we will meet at Milliways.

  • Carl,
    I’d love to meet you at Milliways someday! I appreciate your response. And if the story I wrote wasn’t as clear as it should have been, my apologies. I was trying to make it interesting, and also stay within Steven’s word count.
    Best regards,
    Linda McCulloch

  • Raymond J. LoRae

    My wife has a registered trademark for about six or seven years. Now a major company wants to put us out of business and sue us for damages. Even though our names are different, one of the words in trademark is the same as theirs. They are demanding we abandon our trade mark so they can use it. Who can we contact in the government to help us?

  • Raymond,
    I am so sorry I did not see your post which came over in April, I don’t know why I did not see it. However, you may have solved your problem by now but the first thing I would have told you is that the government probably cannot help you. A good IP (Intellectual Property) attorney is what you need. I don’t know where you are located but many IP attorneys have solo practices and can be pretty reasonable, at least just to give you some advice.
    Again, sorry for not seeing your post. I hope you have gotten some help for your problem.