The following post is a guest post by Anji ISMAIL, co-founder & CEO of DOZ, which provides Search, Social Media, and Content Marketing through a community of multi-localized experts. You can follow him @anjismail.
This story about our own experience aims to avoid other startups getting into the same troubles.
Always register your trademark!
A trademark designation will communicate your intention to build a strong company to your ecosystem, clients, investors, and partner companies. The process is easy and you can do it yourself on the USPTO website.
One important step is to select the class in which you want to register your trademark. A class is basically a category of industry in which your service / product is going to evolve. E.G Facebook is registered in both class 35 (Advertising; business management; business administration; office functions) and 38 (Telecommunications). Before selecting your class of service, do the research; look at trademarks for companies operating in the same space.
Use your trademark ASAP
If you are not ready to start using the name, you can file an “intent to use” application to reserve your name for a specified period of time. But the best bet is to begin using it as soon as possible. Using the name internally is not good enough; you need to use it in a way that is visible to people outside of your organization. For instance, private beta users would be considered “public use” because they are not part of your team. You can create a “coming soon” landing page describing what the site will be all about or use the name to advertise and promote your new site.
Can someone cancel my trademark?
Even after you register your trademark, another person can file legal actions to cancel it. You’re at risk to have the best domain name you’ve ever had taken away from you. However, the challenger will have to prove that consumers are likely to be confused between the two names.
The story of DOZ
Our launch strategy for the US was to re-brand the original company Capseo (in France). We worked a lot and the end result is www.doz.com. Getting this domain name was like finding the Holy Grail. First, because it really meant something to us (read the story here), but also because it’s a great 3-letter domain name.
After running several private beta campaigns with customers, we launched to the public on March 6, 2013, at LAUNCH Festival in San Francisco. The aim was to get customers, press, investors etc. But to our surprise, some unwanted attention came in the form of an email from SEOmoz, asking us to abandon our trademark.
The story of Moz
SEOmoz is launching Moz.com, which appears to be a Marketing Analytics software. Why SEOmoz would like to cancel DOZ? No idea! “MOZ” is the ISO code for Mozambique. What if the President of Mozambique (Armando Guebuza) decides to claim moz.com?
When approaching bigger companies, be careful.
Back in January, I approached SEOmoz to form a partnership. We wanted to be featured in their “Pro Perks”, and in exchange bring them leads for a 60-day free trial. Result: we weren’t featured, but our “Partner” landing page is still up. At the meeting, I gave SEOmoz information about our business and vision. I felt confident with them. That was my mistake.
Their mission statement is TAGFEE, where the first “E” stands for Emphatic, we can read: “What we are doing: We treat others the way we wish to be treated (…). We will strive to maintain the highest level of professionalism etc.”
Two e-mails stating, “you need to abandon your trademark”, followed by letters from attorney, are not what you can call either professionalism or empathy.
Don’t think you don’t need a lawyer. You do.
You cannot build an iOS app without a good iOS developer, and you cannot build a successful company without a good attorney. Get an attorney as soon as you start doing business. If he/she follows you from the beginning, he/she could be even better at protecting you.
Anyone can fall victim to a dispute like this. Even if it is a meritless suit like this one, you need to be prepared to defend it. So I strongly advise you to have a trademark attorney on your team to protect and fight for your assets, just like we are for DOZ.
DOZ is doing great, and such issue is just giving us more motivation. With DOZ, our focus is to help US Brands to grow outside their borders by reaching international audiences thanks to localized marketing and industry experts. We are actually closing our first round of financing (http://angel.co/doz).