One of the things I’ve been doing here and there is talking with people about whether big New York publishing, small press publishing, or indie publishing is best for their book and audience. And for those who do decide to start their own companies, the question of trademarks comes up. Should they trademark it?
Here’s my experience.
When I first looked into it back in 2003 and saw how expensive a federal trademark was, I thought, “The name of my publishing company is a Hebrew word, and would never be associated with books. So why pay the hundreds of dollars it would cost?” My company name was at the top of the first page on Google. (I know—I checked page rankings frequently.) Why worry?
Fast forward two years. A young Jewish teen in another state decided to start a magazine. She played around with names and designs. If she Googled (or used any other search engine) the name she wanted, she would have seen that there was already a publishing company with that name. Her magazine name was the same name as my company, except I had “publishing” at the end.
As soon as I found out about this magazine, I emailed her. I told her who I was and that I had a book publishing company by the same name. I thought she would react with an “Oops, the name I chose is taken!” But she didn’t. And she had far deeper pockets that could defend her than I did.
When I investigated further, I was told that book publishing and magazine publishing were considered different businesses and not easily confused in the marketplace. I could hire an attorney (with money I didn’t have) and try to intimidate her into changing her name, or I could coexist.
I chose the latter, and we coexisted for a while. But imagine my horror when I found out (through Google Alerts) that her magazine company had created an umbrella “media corporation” by the same name and was now going to publish books.
This time, I sucked it up and called an attorney. Even though I hadn’t registered my company name as a trademark, I had clearly used it first in commerce, which gave me some legal protection. My attorney talked to their attorney and they changed the name of their book publishing arm. But in all their marketing materials, and on the copyright page, they added “an imprint of ——— Media, Inc.” Legally, they were allowed, because the media corporation was not, itself, a publishing company.
Publishing Jewish books is a niche, and it didn’t take long before there was mass confusion about which company was which, and who did what book. With the advice of a couple of attorneys, who thankfully talked to me at some length without charge, I learned that at this point, I had three choices: change my company name, take the other company to court, or agree to coexist.
The first choice would require new everything: website, business cards, logo, print runs with the new name and logo, tax ID number, bank account, and so on. The second choice could easily run me $75,000 and I had a 50% chance of winning, in part because we had coexisted initially (appearing that I was okay with their use of the name). The third choice was not an option. Been there, done that, got the t-shirt.
So I did a ton of research. I sought input from others on the new name. I spent countless hours on the Internet, searching trademarks and each state’s and international business records to make sure I didn’t take someone else’s name. When I discovered that the domain name was available, I registered all the extensions. I built a new website, created a new logo, and set about building a new identity.
And one of my first steps was to register the new name as a trademark. It was expensive because I registered first as an “intent to use,” then had to wait for approval, an opportunity for opposition, and then had to file a “statement of use.” I registered in three different classes, which includes not only book publishing, but magazines, gift books, cook books, audio books, ebooks, and some weird stuff like printing presses, typewriters, paint brushes, and vending machines.
As of the end of April 2012, the trademark was approved and registration was final. Total fees to the United States Patent and Trademark Office: $1,550. Total cost for domain registration, business cards, corporation creation, custom website, and other new identity aspects: $766.60. Knowing my business identity is safe: priceless.