IDEADEMIC

If you’ve ever set out to name your company, this post is for you. If you’ve searched for a name that was visually stellar in a sassy serif typeface, a name that could be 100% yours according to the USPTO, a name with a corresponding available domain that was easy to remember and didn’t read like Pen Island’s url when typed in your address bar, then this post is for you.

Last April when things were just starting to come together for this venture we found and became attached to our new company’s new name.

We did our research, our WHOIS check, our US trademark evaluation, and thorough look at all cached material that could possibly be referenced as trademark infringement with the use of our new name, Elementary.

Ten dollars to GoDaddy and quite a bit of paperwork later we were up and running as an LLC with the URL elementaryco.com marking our existence online.

In all that prior research had we come across anything that seemed like a red flag? To us, no we hadn’t.

What we had found was…

• One live trademark on file with the USPTO for E-lementary with the description: Computer services, namely, creating, maintaining, designing, implementing, and managing web sites for others. (No big deal we thought, we’re not building and managing sites for clients.)
• We tied that to a tiny thumbnail image of a site, no longer live, that was described as a web-based tool for elementary schools. (Okay, not what we’re doing. We’re cool there.)
• In addition, the domain utilized for the afore-mentioned service, e-lementary.com, had expired, so we purchased it. (Alright, clearly a no-brainer. The site that the mark was purchased for does not exist, and the domain is now ours. Coast is clear.)

We were wrong.

These are our lessons learned:

1. Beware the pseudo mark: If it sounds the same, it doesn’t matter how it’s spelled. A pseudo mark is a word that is an alternate spelling or intentionally misspelled version of a word that is protected by an existing similar mark. E-lementary is the same as Elementary is the same as Elimintery is the same as 3l3m3ntary.
2. Trademark descriptions are intentionally written as broadly as possible. Even if the actual usage of a mark is quite narrow, the description will (and for your protection yours should) read loosely in order to keep options open as your business develops.
3. Ask yourself, “Is it worth the time and legal expense to fight for a name?” We had to come to terms with the fact that as a new company with no product or reputation yet dependent upon the name that it was best to just let it go. As our lawyers pursued the mark on our behalf, this quickly became evident (and expensive).

So, as damn sexy as Elementary looked tightly kerned in Casalon Graphique EF…

Consider yourself warned. Beware the pseudo mark!

(Disclaimer: We are not lawyers and this is not legal advice. Talk to your own lawyer…)