# Using and protecting your brand name



## hello22 (Sep 15, 2014)

So i have a name for my brand i want to use. A quick google search shows that a teenager has already made a facebook clothing page with the same name. 

Although it's nowhere near established, and it looks like he just made it for fun. It doesn't look like he's printed or sold anything. Nor are there links to any of this. It's just a Facebook page.

Does this entitle him to any legal protections, or am I in the clear to use the name? Also when I do use the name, how do I protect it? Do I just need to sell a shirt to receive 'Common Law' trademark rights? Does this transaction need to be recorded?

How do i go about protecting the name?


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## royster13 (Aug 14, 2007)

hello22 said:


> It doesn't look like he's printed or sold anything. Nor are there links to any of this.


Better know that for sure....1st use in commerce is powerful....


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## hello22 (Sep 15, 2014)

royster13 said:


> Better know that for sure....1st use in commerce is powerful....


Okay, but on what level would he need to have sold the shirts on in order for first use commerce to be considered? Just selling them to friends for 10 bucks cash out of his garage? Or does it have to be on some sort of larger scale? What is considered first use?


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## royster13 (Aug 14, 2007)

hello22 said:


> Okay, but on what level would he need to have sold the shirts on in order for first use commerce to be considered? Just selling them to friends for 10 bucks cash out of his garage? Or does it have to be on some sort of larger scale? What is considered first use?


As far as I know 1 shirt for 1 cent......


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## kimura-mma (Jul 26, 2008)

hello22 said:


> Does this entitle him to any legal protections


The Facebook page only shows intent. Which is not enough for legal protection. He needs to prove "use in commerce" for legal protection.



hello22 said:


> or am I in the clear to use the name?


Only an attorney can give you advice like that. But a good place to start is to search the database at the USPTO website. If the name shows up as a pending or registered trademark, don't use it. If it's not there, you need to learn more about the kid with the Facebook page to find out what his rights are.



hello22 said:


> when I do use the name, how do I protect it? Do I just need to sell a shirt to receive 'Common Law' trademark rights? Does this transaction need to be recorded?


Selling shirts is a good start towards proving ownership of the name. Record online sales through your merchant account. Record offline sales with receipts.



hello22 said:


> How do i go about protecting the name?


Once you're using the name in commerce and want official protection, you can register the name as a trademark with the USPTO. Technically, you can apply for the trademark registration before you start using it, but you need to be using before you can complete the registration process.



hello22 said:


> Okay, but on what level would he need to have sold the shirts on in order for first use commerce to be considered? Just selling them to friends for 10 bucks cash out of his garage? Or does it have to be on some sort of larger scale? What is considered first use?


As long as he sold 1 shirt, it's enough to prove he used the mark in commerce. If it's literally 1 shirt, his protection may be limited to that market. But that's all assumptions.

The Facebook page may not seem like much, but it's enough to show intent to use the mark as a clothing brand name. And that should be enough for you to want to choose a different name. You wouldn't want someone to see your site and say "he doesn't look established; he probably only sold a few shirts out of his garage; I think I'll steal his brand name," right? 

It's frustrating to find a name you like only to find someone else using it. At this point, you have already admitted on a free, public forum that you know the Facebook page exists. So just respect the fact that someone else thought of it first and move on.


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## hello22 (Sep 15, 2014)

kimura-mma said:


> The Facebook page only shows intent. Which is not enough for legal protection. He needs to prove "use in commerce" for legal protection.
> 
> 
> Only an attorney can give you advice like that. But a good place to start is to search the database at the USPTO website. If the name shows up as a pending or registered trademark, don't use it. If it's not there, you need to learn more about the kid with the Facebook page to find out what his rights are.
> ...


Thanks for the reply. I see where you're coming from and I wasn't intending on maliciously stealing the name. But if his idea was just in passing and he wasn't actually going to follow through, then why not use it and actually do something with it. That was my thinking.

Also, if your name is not trademarked, how much protection does 'First Use Common Law Right' offer you.


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## kimura-mma (Jul 26, 2008)

hello22 said:


> But if his idea was just in passing and he wasn't actually going to follow through, then why not use it and actually do something with it. That was my thinking.


That's a logical thought process. But the USPTO can't value trademark ownership based on number of shirts sold or where they are sold or how good a Facebook page looks. They need something more finite, like "first use." Even if they sell 1 shirt and you sell 1000's, it's still their mark if they used it first.



hello22 said:


> Also, if your name is not trademarked, how much protection does 'First Use Common Law Right' offer you.


Generally speaking, you can protect the mark within the states you have sold product in. But the internet makes it so easy to sell in multiple states. So it can be tough to prove - or disprove - depending on what side of the line you're on.


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## binki (Jul 16, 2006)

Trademark it, sell it, send a c/d. After all, you gotta have more money than a kid. Also, if he is under 18 he has no legal ability to execute a contract. If that fails hack his Facebook page and take it over.


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## hello22 (Sep 15, 2014)

binki said:


> Trademark it, sell it, send a c/d. After all, you gotta have more money than a kid. Also, if he is under 18 he has no legal ability to execute a contract. If that fails hack his Facebook page and take it over.


Even if I did take the name. He'd have to pay alot for attorney fees to sue me. It'd probably not even be worth suing me over right?


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## royster13 (Aug 14, 2007)

hello22 said:


> Even if I did take the name. He'd have to pay alot for attorney fees to sue me. It'd probably not even be worth suing me over right?


You are starting to sound like a complete idiot....Find another name and move on.....


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## kimura-mma (Jul 26, 2008)

hello22 said:


> He'd have to pay alot for attorney fees to sue me.


Not necessarily. He can probably find an attorney willing to work pro bono. Especially since you've pretty much admitted to the infringement on a free public forum. Or maybe he has a family member that's an attorney willing to take the case just to bury you in your own legal expenses.



hello22 said:


> It'd probably not even be worth suing me over right?


That's impossible to assume. You don't know what he has to lose or gain over the trademark.

Have you taken the time to search the trademark database yet?


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## hello22 (Sep 15, 2014)

royster13 said:


> You are starting to sound like a complete idiot....Find another name and move on.....


Just trying to understand the legalities involved.



kimura-mma said:


> Not necessarily. He can probably find an attorney willing to work pro bono. Especially since you've pretty much admitted to the infringement on a free public forum. Or maybe he has a family member that's an attorney willing to take the case just to bury you in your own legal expenses.
> 
> 
> That's impossible to assume. You don't know what he has to lose or gain over the trademark.
> ...


It's not been trademarked. Does this make a difference?

My understanding was that a name didn't have to be trademarked, and so long as they used it first they would have some legal entitlement to it. Like i said, maybe he has intent to sell by making a Facebook page, but as far as i can see that is all there is.


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## kimura-mma (Jul 26, 2008)

hello22 said:


> It's not been trademarked. Does this make a difference?
> 
> My understanding was that a name didn't have to be trademarked, and so long as they used it first they would have some legal entitlement to it.


That is correct. I was just wondering if you had taken the time to research it. No point in assuming risk and legalities if it had already been registered.

Unless you contact the person via Facebook and ask if they are currently using the mark, you really won't know for sure if you can use the mark. Best to just move on and find a new name.


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## hello22 (Sep 15, 2014)

kimura-mma said:


> That is correct. I was just wondering if you had taken the time to research it. No point in assuming risk and legalities if it had already been registered.
> 
> Unless you contact the person via Facebook and ask if they are currently using the mark, you really won't know for sure if you can use the mark. Best to just move on and find a new name.


I have, I just need further help in understanding it. Are you in law by any chance?

Last question, So if he is legally entitled to the name through first use, what would be the use of him or anyone trademarking the name? 

Also another thing that's confusing me is, I see companies listed as 'DEAD' on the trademark database. So, do those companies technically still have rights to the name? Or are they okay to use?


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## kimura-mma (Jul 26, 2008)

hello22 said:


> Are you in law by any chance?


No, I'm not an attorney. I've been in the pro sports, merchandising and licensing field for 14 years. I've done plenty of research in copyrights and trademarks. Don't take my words as law. But I can give you decent insight into this situation.



hello22 said:


> Last question, So if he is legally entitled to the name through first use, what would be the use of him or anyone trademarking the name?


He's entitled to the mark through first use. But can only protect it in states he can prove commerce. A federal trademark registration covers all states and offers public record and legal recourse.

If I'm understanding your question, you're basically asking what is the point of registering a trademark when first use is the real benchmark for ownership. Well, there are many benefits to a registered trademark, but here's a few basic examples for the purpose of conversation:

1. Without a registered trademark, there is no public record of ownership. So someone - like you, for example - may be tempted to use a name that is actually owned. If the name was registered, you may choose to steer clear. So the registered trademark helps to prevent others from using the mark.

2. If someone does use the mark, the first use owner can take legal action. They can start by sending a C&D letter. But the infringer - like you, for example - may question the validity of the first use and/or common law rights. So they may prefer to take the case to court and make the owner prove their first use and common law rights. This would cost time and legal fees. But if the owner of the name had a registered trademark, the infringer may have just adhered to the C&D and saved everyone the time and money.

3. Wholesale and licensing opportunities. If the brand owner wants to sell product wholesale or license their brand to a third party, having a registered trademark helps validate their brand. It also helps to establish value - either real or perceived - in their brand and products.



hello22 said:


> Also another thing that's confusing me is, I see companies listed as 'DEAD' on the trademark database. So, do those companies technically still have rights to the name? Or are they okay to use?


DEAD means the trademark is no longer active. Generally speaking, the owners do not have rights to the trademark anymore. So they are ok to use. But there is always the possibility of gray area here. So use some discretion and research the actual marks you want to use.


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## binki (Jul 16, 2006)

hello22 said:


> Even if I did take the name. He'd have to pay alot for attorney fees to sue me. It'd probably not even be worth suing me over right?


You sue him. The best defense is a good offense.


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## kimura-mma (Jul 26, 2008)

david wilson said:


> I think, you should send him a message and tell him that you have a facebook page name which is my brand name so please change it, it is effecting my brand. After that create some social media pages on facebook, twitter, pinterest and linkedin.


So he should lie? How would that help if the other person has a legal right to the name?


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## kimura-mma (Jul 26, 2008)

david wilson said:


> I said, you send him message and tell him you have official rights of this name please remove it or change your facebook page name otherwise you will go legally. If he does not respond you then you can take legal action.


But the OP does not have official rights to the name. So that claim would be fraudulent. It's possible that the Facebook page owner actually has the rights to the name. So contacting him in the way you described could open up unwanted legal issues for the OP.


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## premiumtrends (Sep 14, 2014)

Quick google search and this gives a good idea. 
How Screwed Am I? Another Business Has the Same Name As Mine! - Moz


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