Name Calling
Playing the trademark game.
Who is The Pizza Maker, anyway? Entrepreneur Mark O'Brien in
White Lake, Michigan, says he is--and used a federal
trademark to stake his claim. But Allied-Sysco Food Services Inc.,
a subsidiary of billion-dollar food distributor Sysco Corp. in
Houston, wants rights to The Pizza Maker moniker and filed a
petition to cancel O'Brien's trademark. So who's
right?
No one yet, pending litigation. After the U.S. Trademark Trial
and Appeal Board canceled O'Brien's Pizza Maker trademark
last year, he countered by filing a federal lawsuit against Sysco
and Allied-Sysco. Despite the lengthy legal battle, O'Brien
insists he'll fight to the end. "If I don't win, I
lose my company," he says.
Many small businesses have found themselves caught up in similar
legal tangles. Consider Dee's Cheesecake Factory in
Albuquerque, New Mexico: After years of success, this bakery's
founder launched a legal battle after discovering a national
corporation using the same name, minus the "Dee's."
As a result, both companies retain their respective rights to use
the "Cheesecake Factory" name.
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"Rights in names or trademarks in the United States arise
from use in commerce--not necessarily from registration," says
Mark Partridge, a Chicago attorney specializing in trademark and
unfair competition law. "[Small businesses] have to understand
that just thinking of a name and getting a registration doesn't
give you a monopoly." Anybody can file a petition to cancel
your trademark if he or she believes you've abandoned it--the
exact reasoning behind Allied-Sysco's hot pursuit of
O'Brien's Pizza Maker.
To protect yourself, you must actively use your company name and
document all business transactions to prove it. Build an identity
with your clients; courts often entitle protection if confusion
arises from another company using your name. And get a federal
trademark by filing an ITU (intent to use) application with the
U.S. Patent and Trademark Office; this guarantees nationwide rights
prior to use.
To strengthen your strategy, do business in other states.
"Your rights are limited to where you do business unless you
obtain a federal registration," explains Partridge. "[And
remember,] no marks are created equal. Some are weak from the
start, and some are strong." Unique names, such as Xerox,
offer far more protection than those that just describe what you
do, such as The Pizza Maker.
It's a lot to keep in mind, but covering your bases will
help you in the end. Says Partridge, "It's not a losing
battle if you think about it from the start."
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