7 Things to Do If You See Someone Using Your Brand, with Dayna Thomas

Welcome to another episode of Launched & Legal with Dayna Thomas, Esq., entrepreneurship attorney and law firm coach. Launched & Legal is an Atlanta Small Business Network original series dedicated to bringing entrepreneurs and business owners the best practices and tips for strategizing, legalizing, and monetizing their ventures. Today, Dayna is joined by Shay Davis, founder of The Money Council and Digi Suite Council.

If you have questions or comments about today’s show, send Dayna a message or comment on Instagram @daynathomaslaw.

Transcription: 

Dayna Thomas, Esq.:
Hi everyone. I’m Dayna Thomas Esq., and welcome to Launched & Legal, where it’s my mission to help you strategize, legalize and monetize your business. I’m so excited that you’re watching because today, and in every show, I’ll be sharing the best practices and tips to take your business and brand to the next level.

So today I want to talk about trademarks. I practice trademark law and I work with a lot of entrepreneurs who are building brands, who are in the process of selecting new brand names. What constantly comes up is someone reaching out because they discovered someone else using their brand name.

Now, our brands are our babies and they should be. The brand represents you, it represents your business, it’s your reputation. So you really should be taking care of your brand along with everything else that comes with business. When it comes to protecting your brand, we’re talking about trademarks.

So today I want to talk about seven things that you should do if you see someone using your brand name. All right. I also have with me Shay Davis. Shay is a client of mine for several years and she owns a couple of businesses and she’s an accountant and she helps business owners with their bookkeeping, accounting strategies and she’s also a coach. So many other things as it relates to finances.

But Shay and I have discussed this very topic, so I’m going to talk to her, along with all of you, about what to do if you do see someone else using your brand. So Shay, I’m going to start with number one.

Shay Davis:
Okay.

Dayna Thomas, Esq.:
First we have to determine if it’s actually confusingly similar.

Shay Davis:
Yes.

Dayna Thomas, Esq.:
Now for a lot of people what is confusingly similar? Because before I even became a trademark lawyer, I’d never heard of the phrase confusingly similar. So confusingly similar, unfortunately it’s not black and white. There’s not a checklist or if this, then that. With confusingly similar, there’s a lot of case law, there’s a lot of analysis that’s involved about whether marks are confusingly similar. So we have to actually look at the brands themselves. When I say mark, I mean the brand. Whether that’s a name, it’s a logo, it’s a tagline, we look at the mark and we compare them.

Sometimes it’s an exact match. So we got that in terms of looking at the mark, but sometimes it’s not. A lot of times it might be the overlapping word. Sometimes it might be two of the three words are the same or just overall they give the same impression. So we have to look at the mark and see if the marks are actually similar.

Next, what you want to do is look at the products and services offered because even if it’s the same exact brand name, the same exact logo, the same exact tagline, if the products and services offered are not related, then it’s not trademark infringement. Think about how we have Delta Airlines, but then also Delta Faucets. Now, if I came across both of those companies, I’m not going to think that Delta is now selling faucets. That Delta Airlines went from airline industry to now they sell faucets and vice versa, which is why they can co-exist.

So even if it is the same mark, if it’s unrelated products or services being used in connection with those marks, it is not confusingly similar. Think about your audience.

Shay Davis:
But that’s so interesting that you mentioned that because I know when I was first branding my company and using the Money Council, it was nowhere on the internet and I felt so comfortable using it. Then when I finally got my trademark registration, I started seeing it pop up. I remember us having so many conversations about, “How do I this? What is the best strategy for this?”

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
Should I care about this because it is my brand, it is my baby, but I am so small. So what are the next steps? So confusingly similar is totally something that’s confusing. If it was confusing for you starting out, it’s definitely confusing for me as an accountant. It’s something that I’ve dealt with for both brands, for the Money Council and DigiSuite Council.

Dayna Thomas, Esq.:
Absolutely. This is not… Determining if something is confusingly similar, you will not just get like that. It takes a lot of experience. But that’s the first thing because if it’s not confusingly similar, then there’s nothing to even talk about. Consumers have to actually be… There has to be a likelihood that consumers are actually confused by the use of these two brand names, even if they’re an exact match. That’s number one.
Number two is determine who has prior use because even if you’re using a brand name, maybe that person that you just discovered was using it 10 years before you.

Shay Davis:
Yup.

Dayna Thomas, Esq.:
Because we always feel like we are the only one using this brand name, it represents us. We feel so connected to it. When we did the Google search before, we didn’t find anything. But maybe there was a company out there and you’re now discovering them, but they were established several years before you, several months before you.

So with trademarks, prior use does matter because sending a cease and desist letter or something like that, which I am going to talk about in a little bit, for a brand that has been using it way longer than you, you can really expect a strongly worded cease and desist letter right back.

So number two is discover who has prior use, who was using it first. You can check out their website. Sometimes on people’s website or company website it says, “Established in such and such year.” That’s helpful. Look at their social media and scroll, scroll, scroll so you can see when was their first post for this business account. That’s helpful. You can see when the domain was bought. So I go on Whois.com and that’s the website that I use that tells me when the domain was first purchased.

Now does that mean that that’s when the business first started? No. But is that a good indication of when the business may have first started? Yes. So if you know that domain was purchased way before you started using that brand then that tells you that they likely had prior use.

Shay Davis:
That’s interesting that you mentioned that too, because with the Money Council, when I would do… I do my Google searches every month to see if anything is popping up that I need to talk to you about. It was interesting because there is this one domain that’s out there that’s lingering, which is called MoneyCouncil.com, that’s being sold by a third party vendor.

What I realized is that as a business owner, you first have to check to see if someone owns the trademark. I’m noticing with that one domain that they’re trying to sell, every month it’s going down in value because the likelihood of somebody purchasing that domain is going to be low since they’ll check the trademark registry.

Dayna Thomas, Esq.:
Absolutely and there are domain squatters, but even if someone has a domain, but they’re not offering any product or services under it, it’s not trademark infringement because it has to be connected to a product or service. But that definitely matters.

So the last way that… Not the last way, but one of the ways that I want to mention about how you can see who has prior use is if you discover what the company is that owns that brand, you can look on the Secretary of State’s website and see if they have an LLC or a corporation, when that was formed. That gives good indication. Again, that’s probably the best indication honestly. But a lot of times it’s not easy to find out what the LLC, or the corporation, or the entity name is because a lot of people just operate from their brand name.

Shay Davis:
And DBA. Yep.

Dayna Thomas, Esq.:
You may never see what the real LLC name is. One way that you can discover that, if you go on a person’s or a company’s website and you scroll to the bottom and they have… If they even have this, terms and conditions and privacy policy, that’s a contract. So who is the contract between? The contract isn’t between the brand, the contract is between the company. So that’s how I find and discover businesses.

Shay Davis:
The only way that I discover if people may possibly be infringing on the Money Council is by Googling it. With the one big brand that we talked about two years ago, it was like okay, clearly this is similar, but you couldn’t tell whether it was an individual brand or if they were going to use it in the future, what their strategy was. But I never knew about the terms and conditions and all of that. So I’ll do that going forward.

Dayna Thomas, Esq.:
That’s how we find what company it is that has this website up. All right, awesome. So we determine prior use. That’s step number two, because you don’t want to go out guns blazing if you don’t actually have the rights.

So number three, you want to see if they have a federal trademark. Shay, we’ve consulted on this so she knows. She’s mentioned this before. See if they have a federal trademark. Now, all federal trademarks are public information. You can go on the USPTO website USPTO.gov and click on where it says for a TESS search, T-E-S-S and you can see if they have a trademark.

Now searching the trademark database is not a simple thing to do. If you are specifically looking for this one brand name it’s probably easier to find that. But I will say this. Just because you don’t find it doesn’t mean it’s not there, because it may be a certain spelling, it may be some punctuation. Maybe they have a trademark for their logo, but the words are in a different order in the logo. There could be many different situations. I think that that is a good indication of whether they have one or not by you doing your own search.

But honestly, there’s some expertise that goes into doing a trademark search to really determine if someone has a trademark. So you want to see if they have a trademark because if you don’t have a trademark and they do, this whole thing probably will stop right there.

Shay Davis:
Game over.

Dayna Thomas, Esq.:
Number four, you want to consult with a trademark lawyer. We’re consulting with a trademark lawyer at least just for a consultation to start with, Shay, because we want to verify step one, step two, and step three, what I just mentioned.

Shay Davis:
Exactly.

Dayna Thomas, Esq.:
So you could do all your background research to try to determine what’s confusingly similar, step one. Or do all the research and investigation to try to determine prior use or if they have a trademark. I think that’s good foundation for you to lay, but really it’s a lawyer who’s going to be able to tell you what actual rights you have and to check behind the good investigation that you’ve done.

Shay Davis:
I got to add to this, because when I first met Dayna, I was trying to DIY everything, because as an entrepreneur you try to understand what is the best use of your budget. For me, I was like okay, I need to make sure that I can trademark this thing, but do it in an affordable way. But if you do it yourself and you end up getting letters back that you don’t understand, you’re literally at a standstill to try to figure out how to solve this on your own. I think the right term is legalese. There could be legalese in the letter that you don’t know how to move forward with.

So if there’s any entrepreneur out there, this step is critically important before you try to DIY an application because the lawyer will be able to opine and give you an opinion on if you can move forward or not.

Dayna Thomas, Esq.:
Absolutely. Thank you for saying that because it’s really true. We’ve gone through this together and we’ve definitely taken strides. So with consulting your trademark lawyer, even if you discover that that other person has a trademark, the lawyer will be able to tell you if that trademark is in good standing. Maybe it’s not in good standing, maybe there’s an expiration date coming up. Maybe there was a deadline that was recently missed and we need to flag the trademark office so that the application is actually canceled.

Maybe they have a trademark, but it’s not for the goods or services that you offer. It might be something completely different, which allows you the opportunity to trademark it. So it’s not black and white, but definitely consult with your lawyer to make sure step one, step two, and step three is done correctly and to actually tell you specifically about your rights. Not only a lawyer, but a trademark lawyer.

All right. Number five, hire a trademark lawyer. So whether you have a trademark or you don’t, you still need to hire a lawyer to have this handled correctly. So first I’m going to say five A. We’re at step number five. Five A, is if you don’t have a trademark already pending or registered, hire that lawyer to file a trademark for you. The last thing that you want to do is be aware of what’s going on. There’s this other brand that is confusingly similar. They have related products and services, but they file before you. If they file before you, there’s not very much that we can do that won’t cost thousands and thousands of dollars to try to challenge their application.You may not even have the rights to actually challenge their application. But if you file first, that puts you in a substantially better position to get that trademark.

So step five B, is if you do have a federal trademark already, first of all, I want to congratulate you. Good for you, you did it right. But that puts us in a great position to send a cease and desist letter. Now a lot of entrepreneurs are not confrontational, but a cease and desist letter is very important because the extent to which you protect your brand, that is the strength of your brand. The more you allow people to use your brand name or use brand names that are confusingly similar, the weaker your trademark registration will be.

So if my brand is Purple Balloons, but I’m letting a bunch of other companies use Purple Balloons, International Purple Balloons, Atlanta Purple Balloons, United, then that means that I am not protecting my trademark rights. There’s several other brands that use Purple Balloons to sell similar services. So we can all coexist, but no, we don’t want that. If you have trademark rights in something, you want to be the exclusive user of that brand. Sending cease and desist letters shows and proves in documentation form that you are actively protecting your trademark.

Shay Davis:
I know we talked about this. What happens if you see a big brand using your trademark? We have a lot of big brands that prey on smaller businesses. What are your thoughts with sending cease and desist letters to the big brands that is squandering on your trademark?

Dayna Thomas, Esq.:
Absolutely. So a lot of big brands are what I call trademark bullies. I have seen that. The trademark bullies are the ones who their rights don’t even extend to your brand name. Or maybe you see them using something and you have a trademark for it and they don’t, or they want to start using it.

I have never backed down, especially when it comes to trademark that I file. I feel very connected to that brand and that business owner because they are taking the steps to do it the right way. I mean when I send something, I know what I’m talking about. So I would not be afraid personally to send it to a big brand. One, we have it in documentation form that we are protecting the mark. There’s a slight chance that they didn’t know, but even if they did know, it’s very unlikely, to be honest, that they will stop. That’s just the nature of being a big brand and small fish.

However, the entrepreneur has to know how far are they willing to go? How far are you willing to go? Do you want to push this? Do we want to pursue trademark litigation? Do we want to pursue some type of coexistence? But even sending the letter, first knowing that you have prior use. Because if you don’t have prior use, they’re going to turn around and send you a cease and desist letter. So we can’t get too excited that this big brand, I’m going to settle with them, they’re going to give me bunch of money because they’re using my brand, but you didn’t do your research correctly and they actually have prior use and they turn around and send you a cease and desist. But of course we’ll know that working with me. That was a great question.

Number six that I want to talk about is take down notices. So there’s something that you can do called trademark take down notices. Not to be confused with copyright take down notices through the Digital Millennium Copyright Act. Different, but trademark take down notices. A lot of platforms, if not every digital platform has some type of button you can click on, a form or something to report to YouTube or Facebook, Instagram, Shopify, Eventbrite, Amazon that someone is using your trademark. So they do have a way for you to report it.

I only recommend doing that if you have a trademark registration or if you know you have prior use. Because if you report that and they take it down and someone loses profits and you really didn’t have those rights then that could really be trouble for you.

Shay Davis:
Now does this include fake pages? Because I recently went through a fake page that’s using the brand name.

Dayna Thomas, Esq.:
Yeah, fake pages as well. So they will likely take it down. If you have a trademark registration and you attach that or you provide the link to share your trademark registration, I have not seen these platforms not take it down.

Shay Davis:
Okay.

Dayna Thomas, Esq.:
They will take it down, but if you don’t have a trademark registration, a lot of times I feel like they’re not going to want to get involved because who actually has the rights? But without a registration then they’re just guessing and they don’t want to do the wrong thing either.

Shay Davis:
Got it.

Dayna Thomas, Esq.:
Right. Last but not least, be prepared to defend your brand, number seven. Now, does that mean that every single time you see someone using your brand you have to dish out $5,000 to hire a lawyer to pursue litigation? No. Every single use is not going to be worth the fight. Maybe you’re selling clothes and this person is selling jewelry. It’s not exactly the same name. We could put them on notice. I’m watching you. You can do a letter for that.
However, you have to be prepared to actually defend your brand. That might be opposing certain trademark applications. So if you have a trademark registration and you see another brand with a pending trademark application for something similar to yours, we can oppose that application so that it doesn’t get registered. We can cancel trademarks if you were using it first but you just didn’t get around to registering it. Or just good old… not even good old, but trademark litigation, which is a headache. But we have to be prepared to actually defend our brands and definitely speak with a trademark attorney to see what’s the best way for you.

The bonus thing that I want to say, Shay, is sometimes we just have to be prepared or willing to rebrand.

Shay Davis:
Yes.

Dayna Thomas, Esq.:
You don’t want to hear that, at all.

Shay Davis:
Not at all.

Dayna Thomas, Esq.:
No, we don’t want to hear that at all. But there have been many situations where someone has come to me, they’ve seen another Instagram or a Facebook page with a similar brand. I do my investigation. This person has been using it before you, they have the federal trademark, you don’t have the federal trademark. You guys sell the same exact thing. Your mark is definitely confusingly similar.

I would never advise a client to just ignore them and keep using that mark, because there’s definitely potential that they will send you a cease and desist letter and how can you really confidently build your brand, spend money on it, invest in it, knowing that there’s a possibility that you might have to rebrand because of a cease and desist letter.

Shay Davis:
Exactly.

Dayna Thomas, Esq.:
That’s not on your timeline.

Shay Davis:
Exactly. Not only that, but it takes money to build a brand. So when you dished out a lot of cash, which is in the thousands, a lot of business owners get so confused and wrapped up in a business launch without even doing the proper legal foundations in talking to a lawyer. Once you are committed and you’ve wasted all of this money, because it’s a waste, it’s a [inaudible 00:20:14] cost at that point.

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
So it’s always better to do your due diligence upfront. I always tell all of my business clients this, “Do due diligence first-

Dayna Thomas, Esq.:
That’s right.

Shay Davis:
… before you spend the cash.”

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
“Do protection first, before you spend the cash.” Because-

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
… once you have the sign off, you’ll be able to go forward. It’s so interesting with deploying DigiSuite Council, coming up with my DIY S-corp service, we talked about what to and what not to trademark there. I know we’re not talking about copyrights.

Dayna Thomas, Esq.:
No, that’s fine.

Shay Davis:
That’s a whole nother-

Dayna Thomas, Esq.:
It’s related.

Shay Davis:
Yeah, there’s a whole nother story around that. But as digital assets begin to grow, I see that’s another risk in the industry where a lot of people are launching digital assets without having it protected either from a trademark and a copyright standpoint. Once it’s launched, this now allows other people to launch similar things-

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
… without you having that protection to go back to say, “I own this, you can’t sell it.”

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
So that’s one thing that I’m focusing on for DigiSuite Council to make sure all of my checklist items are checked before, what I learned from Dayna, before I make my first sale.

Dayna Thomas, Esq.:
Absolutely.

Shay Davis:
All of the legal items and the things need to be in order.

Dayna Thomas, Esq.:
Yup. Because we can’t commit to a brand name unless we know that we can own it and own it exclusively. Because there’re some copycats out there. If they see what you do with DigiSuite Council and oh, it’s so successful and they’re like maybe I should use DigiSuite Councilor. But with a trademark, that cease and desist letter’s going out really quickly.
So the last thing that I want to do and talk about is the whole thought process and your options for if you don’t have a trademark, which I know most people watching this episode do not. If you don’t have a trademark and you see someone else using your brand and you really do have the rights, superior rights to them, what can you do?

So option number one, you can send them a cease and desist letter, but that’s not a good option because all they’re going to do is file a trademark before you. So option number one is not good. Option number two, we can file the trademark application and then once it’s pending and filed and submitted, then we send a cease and desist letter. Now, option number two is not good either, because there is a period in the trademark process where anyone can oppose your application. Someone who thinks that your trademark registration is going to hurt their business or their brand, or it’s confusingly similar, they can oppose your trademark application and opposition is a huge headache. It’s essentially the start of trademark litigation and defense for opposition typically is somewhere around $5,000 depending on the lawyer that you hire. So that’s not such a good option because it puts them on notice and they’re looking. If that was my client, I would be looking and waiting for publication to oppose.

Option number three is we wait. So we file the application, we wait until it’s registered, and then you send the cease and desist letter. Now of the three options, that is the best. However, it’s not a great option because it takes about, nowadays, 12 to 16 months really to get a trademark registration. If that person is using that brand for 12 to 16 months, guess what, Shay? They’re going to be more connected to it and they’re not going to just rebrand from one cease and desist letter. So if you get them from the very beginning, if they just chose that brand name, they don’t want any problems, it’s more likely for them to change.

But if you wait to send a letter until 12 or 16 months when you have your registration, it’s less likely that they’re going to rebrand just from a letter. So overall, I say all that to say get your trademark registration now. It will help so much if you ever see anyone using your brand name, if you actually have a trademark registration because the process takes pretty long, make sure it’s done correctly. Of course, if you have any questions, just reach out to me, Dayna Thomas Law on Instagram.

Shay Davis:
The best lawyer. Okay.

Dayna Thomas, Esq.:
Well, I hope today’s show help to educate and inspire you as you pursue your business goals. Be sure to share today’s show with someone who can benefit and visit MyASBN.com and subscribe. If you have any questions or comments about today’s show, I would love to hear from you, send me a message or comment on Instagram at @daynathomaslaw. Remember to tune in next week and every week to make sure your business is launched and legal.