One of the most frequent questions I receive from listeners is ‘why should I trademark my tour business?’
I’m not a legal expert, so I’ve asked Gordon Firemark, who specializes in entertainment law and is an expert about trademarks in the United States. You can listen to the interview on Episode 65 of the Tourpreneur Podcast with Shane Whaley.
Should I Trademark My Tour Business Name?
Gordon says, “The short answer, I think, is yes.” Your brand name is what allows you to grow your business.
Another person can start a business using a name that is confusingly similar to your own name and that could really undermine your marketing and promotional efforts and slow down growth.
Trademark registration is an essential way of protecting against this happening. “I would say this is near the top of the list of things to do from a legal standpoint and as you’re getting a business off the ground.”
What Does a Trademark Protect?
Trademarks are designed to protect distinctive names.
Descriptive terms don’t pass muster with the trademark registration folks until they’ve been used long enough to have acquired a secondary meaning in the mind of the consuming public.
Make sure to choose your name wisely and choose a name that’s distinctive so that you don’t have the pushback in those early days.
What Happens If You Get a Letter from a Lawyer About Your Tour Business Name or Your Tours?
Gordon says, “I wouldn’t ignore a lawyer letter or demand because it’s possible the other business could have acquired distinctiveness or claim ownership of the name.” Before hiring a lawyer, do your research online. Do your trademark search of the trademark registration database.
If a company claims they have trademark rights, ask them, “What’s your registration number?” If they can give you a registration number, make your following decisions accordingly. If they can’t prove their number, then I believe you have a reason to consult with a lawyer about your options.
“There are such things as unregistered common law, trademarks, but a name such as culinary tours, food tours, or walking tour, that’s descriptive.” We don’t want to take these descriptions entirely out of the lexicon because there’s no other way to describe the type of tour we’re providing.
I’ve decided I’m Going to Ignore the Letter from the Lawyer
If you ignore the letter, you could end up with a default against your company. Now you have significant legal issues. “I think it’s better to nip these issues in the bud as soon as possible.” says Gordon. Make sure to “Speak with a local attorney who can advise you to register your trade names and trademarks [in your geographic location].”
However, you may have long-standing use of common law trademark protection. “If you were in the marketplace for a few years before the other business came in and crowded the marketplace with their competitive brand, you could put a stop to their trademarked name.” In the US, there are state and federal unfair competition laws. Say the business knew or should have known that you were in the marketplace with your tour business. Then Gordon thinks this is worth exploring whether or not you argue.
Can I Trademark a Slogan?
Trademarks are designed to protect words, phrases, slogans, and graphics that are used to identify particular goods or services as coming from a specific source. Your motto for your brand or product has to be distinctive to be worth registering.
What about Trademarks in Different Countries?
“Trademarks are territorial; however, if the business owner has done business in the United States, they may have common law rights and international rights.” There are international registrations – make sure to be cautious and research when the company started and where.
Should I Fight Big Travel Sites and OTAs from Buying Ads Under My Name?
Asking them politely to stop seems to have mixed success. For example, if Expedia or Booking.com starts using Google ads on Gordon’s Walking Tours, and you ask them to stop bidding on your keywords, would a trademark help you in that case?
“If you have a registered trademark already, then they are advertising after the fact. The timing can be an influence if you already have your name as a registered trademark, and your competitors are bidding on advertising using your brand as the keywords.” Gordon says this scenario is known as initial interest confusion. “In the trademark litigation space, there are claims based on this premise. It’s not easy litigation, and it’s going to be expensive.” He recommends that if you’re not competing in that ad space with the keyword advertising, you may not have the resources to do that kind of fight. Consult with an intellectual property litigation specialist who can advise you on your situation.
What is the Best Way To Register My Business Trademark?
“I would rather that you hire a lawyer to help you do this kind of thing to get the advice about whether it’s registrable, how you can improve your chances of success.” You can also register using online services but Gordon suggests against registering through these services. “I’m not a big fan of those. My feeling is if you were walking down the street and you saw a box with a hole in the bottom, hanging about head height and a sign says haircuts $1, would you stick your head in that box? I think that’s what you get with these online services. You might get a great haircut, or you could lose an ear.”
Government Trademarking Rules
Having a professional who knows what they’re doing is key to making sure you are on solid ground with trademarking. Your Lawyer will probably recommend running a trademark search to find out if another business would compete with your name before you try to register. This is the same search the trademark office will run.
Trademark Process Takes Time
The trademark process is time-consuming from the moment you apply to get the registration certificate that can be eight months or longer. Remember that trademarking is a government agency and the examining attorney’s have to look at these applications. There are back and forth questions about the application. The Lawyer you hire who has prepared the application can anticipate many of the questions.
What To Expect When You’re Registering Your Trademark
Trademarking services have search programs, so when someone files a registration, they will receive a solicitation that looks like a demand or a government required certificate or information request. If you don’t use a lawyer to decipher what offers are real, this process can be very daunting. Trademark offices and lawyers know about this process. These communications are deceptive or misleading, but not quite crossing the line on illegal. Make sure you know to look on the outside of the envelope. This will often have an indicator that this piece of mail is not an official government communication.
Evaluate Your Time and Hire a Lawyer
You have to evaluate what your time is worth. You may spend two or three hours that the Lawyer would complete under an hour and know your application is right.
What’s your time worth for that when you could be either out running a tour and getting things taken care of so you have the bandwidth to do activities that are important for your business.
Contact Gordon today to start your trademark registration at Gordon Firemark Law Office.