Protecting Your Design Firm

March 3, 2018
Why your business can’t live without a trademark.

As a mechanical designer with your own small firm, helping companies turn their “back of the napkin” ideas into working machines may be the main focus of your day, but it’s hardly your only job. Another important item on your to-do list is creating and nurturing your company’s brand image and value. If you’ve neglected to secure a federally registered trademark for your firm’s name, however, you’re subjecting your brand and your entire business to unnecessary risk. Let’s take a closer look at what mechanical designer and engineers need to know about trademarks.

What’s a Trademark, and Do You Need One?

The United States Patent and Trademark Office (USPTO) defines a trademark as a name, word, or symbol (such as a logo) that represents a product or service offering. When you apply for and receive a trademark on the federal register, you are obtaining the nationwide presumption of exclusive rights to use that specific mark within your industry.

So should your small design business bother with registering a trademark? Yes, as it’s an investment in your long-term future.

Registering for a trademark on your company’s name lets your proactively protect your firm while letting you keep options open for the future. You’ll have a legal leg to stand on if another mechanical design or engineering firm decides to open a firm with the same (or even a confusingly similar) name. It will also eliminate worries about needing to rename should you decide down the road to expand your business to several locations.

Your Firm’s Name is Your Priority

Assuming your design firm is like most small businesses we’ve worked with, your business name is your most important brand element. And it makes sense: It’s your business name prospective clients search for in Google and share with colleagues when making referrals. If budget is an issue (as it is for many small businesses), we suggest making your business name your top trademark priority, holding off on other brand elements such as your logo and tagline until later.

You may think registering for trademark protection of your logo includes your firm name, but the USPTO doesn’t see it that way. When you file for trademark protection on your logo, you only protect your business name in the graphic context of your logo. So if your firm’s name if simply typed out, or if you develop a new logo three year from now, they would not be protected. Obtaining a trademark registration on your name gives you the broadest level of protection on the name itself; therefore, it is often recommended to consider this type of filing as your top priority.

Trademarks in the Real World

A hypothetical situation will illustrate how trademarks can have impact in the real world. Imagine your mechanical design firm “Zerb Designs” has been in business for five years and you’re enjoying great success. You’ve grown a solid client base with repeat clients, a steady referral business, and positive reviews and press online. All is well until you get an email via your website asking you if your firm is the same as “Zerb Mechanical Designs,” a mechanical design firm located across the country.

No big deal, right? Not necessarily. With a name so similar to your own, and in the same industry, current and potential customers could easily be confused and end up accidentally doing business with your competitor when they intended to do business with you. And think about this: What would happen if a viral video made the rounds showing a Zerb Mechanical Designs employee in the middle of an obscene tirade, or Zerb Mechanical Designs was accused in industry publications and forums of passing off generic products as name brand?

The way you would handle this situation depends completely on your trademark status. If you own the federally registered trademark to Zerb Designs, you have the legal right and obligation to stop other design and engineering companies from infringing on your name. In this scenario, you would work with your attorney to contact the owners of Zerb Mechanical Designs and issue a cease-and-desist order.

But what happens if you do not own the federally registered trademark to the Zerb Designs name? Your path forward is a bit rockier. You and your attorney can request that Zerb Mechanical Designs change their name; however, the legal argument is much less compelling without a federal registration.

Should Zerb Mechanical Designs opt not to change their name and you decide to file suit based on common law trademark infringement, proving your case will be much more difficult and costly than the initial trademark registration ever would have been. Suffice it to say that trying to prove your rights to the name will be far more difficult and expensive than the cost of applying for a federal trademark registration.

With a clear understanding of what a trademark is and why it is important to your design business, now is the time to take action. Working with your attorney, apply for trademark protection of your firm name before other brand elements. And don’t delay: Realize the real-world value of trademarks. Protect the reputation and business you’ve worked so hard to build by putting the trademark process at the top of your to-do list.

Joshua Gerben is founder of U.S. based Gerben Law Firm and a trademark attorney whose trademark registration practice has secured more than 4,000 trademarks for clients since 2008. He was named one of 2016’s Top 10 trademark filers in the US by World Trademark Review.

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