print
I was having a conversation with a colleague recently and was discussing some of the challenges that were met along the way when she brought up the subject of intellectual property.

If you are a business owner or an owner of something that is of high value to you, especially if you spent time, money or sweat equity in its development, take heed. My colleague shared what happened to her almost 5 years after she opened her business without intellectual property protection of her business.

Here is a recap of that part of the conversation:

“ Like most business owners, one does their due diligence by researching the availability of the intended company name, doing a domain name search and filling out the necessary state and federal paperwork to launch their business.

I did all that.

Fast forward 5 years later, a colleague happened to mention that there was someone in Florida with the same kind of business and the exact same company name as mine. As you can imagine, I was stunned. I went online and sure enough, there “I” was in a whole other state, offering the same services etc. The only thing different was the look and feel of the site and of course the business owner’s name.

I decided to contact an intellectual property attorney to see what I needed to do. Because there was a possible infringement already in place, but no trademark, the first thing we needed to do was see who “owned” that name first. A search yielded that I in fact had the name first, but a year later, the other business also took the name.

When I first did my research, my company name was not in use in the US, however the company name as the domain was in use by a foreign company so I took procured the “.net” of the domain name instead.

Since that day, I had not checked to see if the .com had become available or if my company name was being infringed on.

MISTAKE #1 – my attorney advised that it was my responsibility to have been checking that all along. To go after someone after 5 years was going to make for a tough case.

He advised that we need a forensic web expert to “prove” the site was in use by me. With that information we would send a gentle “cease and desist” letter to the offending company. He also advised that it would be a nice gesture to off to pay for rebranding and for a new domain set up. Otherwise, we would risk having to go to court and me having to explain why I waited 5 years to pursue this.

Thankfully the other company was a small business like myself and did not want to get tangled up in any court proceedings. She accepted the offer to change her name and the funds I was willing to reimburse her for her trouble.

Great!

However, I was advised that I had a 50/50 chance of getting my business name approved. The reason being is that I have the word “virtual” in my services. He attorney was concerned because something “virtual” is technically not something real, although “virtual support” is a very real thing that I provide.

(Here’s a little primer on the difference between a business name and trademark: https://www.entrepreneur.com/article/246669)

We proceeded to file the petition for trademark protection and my application was denied.

MISTAKE #2 – Waiting for 5 Years = Fail

5 years of tireless efforts to build my business, keep it sustainable, and profitable while trying to make a mark in my industry was about to take a drastic turn. My attorney advised that we would resubmit and that this not uncommon, we provided a lot of additional resources to support our petition and a few weeks later, the trademark was approved.

So when is the right time to trademark your name? an article posted by Bloomberg answers that:

http://www.bloomberg.com/news/articles/2013-07-05/when-is-the-right-time-to-trademark-your-companys-name

What is the moral to this story? Don’t wait to protect what you have worked so hard for. What could have cost me a few hundred dollars to file my own trademark application, now hit me to the tune of thousands in legal fees and the payments to the “offending” company for their trouble.”

 

Best Regards,
Jared Toren

 

Proper Wealth Management’s (“Proper”) blog is not an offering for any investment. It represents only the opinions of Jared Toren and Proper . Any views expressed are provided for information purposes only and should not be construed in any way as an offer, an endorsement, or inducement to invest. Jared Toren is the CEO of Proper, a Texas based Registered Investment Advisor.   All material presented herein is believed to be reliable but we cannot attest to its accuracy. Opinions expressed in these reports may change without prior notice. Information contained herein is believed to be accurate, but cannot be guaranteed. This material is based on information that is considered to be reliable, but Proper and its related entities make this information available on an “as is” basis and make no warranties, express or implied regarding the accuracy or completeness of the information contained herein, for any particular purpose. Proper will not be liable to you or anyone else for any loss or injury resulting directly or indirectly from the use of the information contained in this newsletter caused in whole or in part by its negligence in compiling, interpreting, reporting or delivering the content in this newsletter.  Opinions represented are not intended as an offer or solicitation with respect to the purchase or sale of any security or financial instrument, nor is it advice or a recommendation to enter into any transaction. The material contained herein is subject to change without notice. Statements in this material should not be considered investment advice. Employees and/or clients of Proper may have a position in the securities mentioned. This publication has been prepared without taking into account your objectives, financial situation or needs. Before acting on this information, you should consider its appropriateness having regard to your objectives, financial situation or needs. Proper Wealth Management is not responsible for any errors or omissions or for results obtained from the use of this information. Nothing contained in this material is intended to constitute legal, tax, securities, financial or investment advice, nor an opinion regarding the appropriateness of any investment. The general information contained in this material should not be acted upon without obtaining specific legal, tax or investment advice from a licensed professional.

Author: Jared Toren

Jared Toren is CEO and Founder at Proper Wealth Management. Proper was born out of frustration with the inherent conflicts of interest at big brokerage firms influencing advisors to sell products that were not suitable for clients but profitable to the firm along with a consistently mixed message of who’s interest was supposed to be put first; the clients’, the firms’, shareholders or advisors.

At Proper, our clients interests come first. We are compensated the same regardless of which investments we utilize so there’s no incentive for us to sell high commission products. Since we focus on a small number of clients, we are able to truly tailor our advice to each person’s unique circumstances.

Share