This is a guest contribution from trademark attorney Xavier Morales.
Should you trademark your blog name? While the answer will vary from blogger to blogger, in general, modern bloggers will benefit from trademark registration. At the start, blogs were something of a personal communication medium. But today, they’ve evolved into businesses and brands. In other words, they have become entities worth trademarking.
Trademarking extends beyond merely filing an application. It starts with the brand itself. Only strong, unique brands will receive trademark registrations. Therefore, a company must search high and low for any existing mark that can be considered confusingly similar.
Even after receiving a federal trademark registration, owners must actively protect their rights. Only they can stop other entities who infringe on their rights. That is, no one else will tell an entity to stop using your trademark. You must go through the steps to protect your trademark rights, which can sometimes include litigation, (though no one wants matters to reach that level).
What Can Happen?
The following recent cases illustrate many pain points in the trademark process. These bloggers applied for, or own, federal trademark rights. But they’ve each encountered obstacles along the way. Bloggers thinking about registering their own trademarks will do well to learn from those who have come before them.
Against All Grain
Danielle Walker had every reason to file a trademark application. Her blog, Against All Grain, barely 18 months old, had acquired an intensely loyal readership. She had just released her first cookbook, of the same name. Anyone in her position should seek federal trademark protection.
In August 2013 she filed her federal trademark application. About two weeks later she received a cease-and-desist letter from Against The Grain, a gluten-free food company from Vermont. A lawsuit followed a month after that. Against The Grain owns several federal trademark registrations for the sale of gluten-free products. But those registrations are not necessarily what spurred this lawsuit.
In January 2013, Against The Grain filed a federal trademark application, “to identify cookbooks, kitchen utensils, chocolate, candy and other confections.” The key is the first in that series. Against The Grain had filed for a federal trademark involving cookbooks before Ms. Walker published hers. That would appear to give Against The Grain superior rights. While they currently have no published cookbooks, Against The Grain founder Nancy Cain plans to publish one in October of this year.
Indeed, the case settled recently, with Against The Grain getting the one thing it wanted: a name change for Against All Grain. Ms. Walker must now identify her blog and products as “Danielle Walker’s Against All Grain.” Additionally, Ms. Walker must abandon her trademark application. She still does, however, own the domain name againstallgrain.com.
Finding a lesson in such a case can be difficult. Is Against All Grain distinct enough from Against The Grain? Could Ms. Walker have done anything differently to better protect her brand? Or was she doomed from the moment she started using the Against All Grain mark?
The biggest takeaway for bloggers: conduct extensive research before you pursue trademark rights. Better yet, research trademarks early in the process. It’s easier to pivot as a young blogger than it is as an established one.
The Honest Toddler
Sometimes two entities can happily coexist – until trademarks come into play. Such is the case with The Honest Company, which sells family and home products, and Honest Toddler, a satirical blog from a child’s point-of-view. The two enjoyed a friendly relationship; The Honest Company blog once featured an interview with Honest Toddler.
But then Bunmi Laditan, the creator of Honest Toddler, filed a federal trademark application.
The US Patent and Trademark Office (USPTO) published Laditan’s trademark in April 2013. At this stage existing trademark holders can file an opposition to the application. The Honest Company filed an opposition, which sparked a long and well-documented debate among bloggers and commenters.
This case is quite different from Against All Grain, in that no one issued a cease-and-desist or filed a lawsuit. The Honest Company merely objected to Ms. Laditan’s trademark application for Honest Toddler. The next step in that process is arguing your case in front of the United States Patent & Trademark Office (USPTO). Before that could happen, The Honest Company tried to negotiate with Ms. Laditan, offering her a free license to use Honest Toddler (reportedly for only one year).
Christopher Gavigan, co-founder of The Honest Company, repeatedly claimed that his company has “superior rights in a class that she is filing in.” Ms. Laditan repeatedly claimed that The Honest Company had no such superior rights. The argument appeared at a standstill after a deluge of commentary in late July 2013. Indeed, there is little, if any, mention of the case after early August.
The case, it appears, has been quietly settled. According to the Trademark Electronic Search System (TESS), Ms. Laditan received her federal trademark registration on October 29, 2013. So what happened? It’s difficult to determine, given the lack of publicity. The USPTO’s Trademark Status and Document Retrieval system does make it a bit clearer. On September 3, 2013 The Honest Company withdrew its opposition. That cleared the way for Laditan’s final approval for federal trademark rights.
In this case, we see a blogger who stood up for her rights. She filed an application for a mark she was using in commerce, one which The Honest Company did not own. (Their opposition cited their trademark registration for “HONESTBABY”.) Instead of acquiescing to the demands of a larger company, Ms. Laditan stood her ground and won her case. There might be entities that can outspend you in court, but that should not diminish your rights if you have followed the proper trademarking procedure.
Food for Thought
Receiving federal trademark rights is only the beginning. To continue enjoying the rights and benefits of trademark ownership, you must take steps to protect your trademark. In some cases this might necessitate filing a lawsuit. While unappealing to some, failing to take protective measures can diminish your rights as a trademark owner.
So far, Timothy Young has declined to file litigation against The Huffington Post and Chipotle Mexican Grill, though he feels they have infringed on his trademark rights. Since 1998 he has held federal trademark rights to the name “FOOD FOR THOUGHT” on a range of food products. He maintains a website, including a blog, in addition to a wide presence on social media.
In 2013 he objected, frequently and vehemently, though not officially, to a collaboration between The Huffington Post and Chipotle Mexican Grill, also titled “Food for Thought”. It might seem odd that someone who holds the trademark for food classes would object to someone else using the phrase in an editorial sense. But Mr. Young claims he does have rights in this case.
Specifically, he claims common law trademark rights to use the phrase “Food For Thought” in an editorial manner. He started the blog on his site in 2007, long before Huffington Post launched its project. Since they both cover similar topics, just and sustainable food, Mr. Young might indeed have superior rights in this case.
Unfortunately, he’s doing nothing to protect them.
Instead of filing a lawsuit for trademark infringement, he launched a brief, but intense, blogging campaign to raise awareness. He has also gone on what he has termed the “Chipotle Accountability Tour,” where he pickets outside Chipotle restaurants. This might be effective for raising awareness, although mentions of the case have not increased since late 2013.
Mr. Young did file a new trademark application with the USPTO in January that covers a host of products, including: “On-line journals, namely, blogs featuring sustainable agriculture, green living, fair trade, activism and policy and politics related thereto.” Again, he believes that this is merely a formality, given that he started the blog in 2007.
If Mr. Young truly does believe that he has superior rights, he needs to protect them. Merely filing a new application does nothing. The Huffington Post and Chipotle will not abandon their project – or at least its name – unless forced to do so. Young can file more trademark applications and protest more restaurants. It won’t make a bit of difference if other entities continue using the trademark on which he claims to hold superior rights.
Trademark is a Process, Not an End
From these three cases we can learn about the different stages of the trademarking process.
Danielle Walker’s case illustrates the need to find a strong trademark before filing an application. In many ways “AGAINST ALL GRAIN” might appear distinct from “AGAINST THE GRAIN”. But given the similarities in the goods and services being offered under both names, it’s no wonder that Against The Grain decided to take action. The only way to avoid such litigation, and to receive a federal trademark registration, is to ensure that your mark is strong and unique.
Bunmi Laditan’s case illustrates the need to stand up for your trademark even when larger brands object. Given the outcome, it is clear that The Honest Company didn’t have firmly superior rights to Honest Toddler. Ms. Laditan stood her ground and won her case. Bloggers can take advantage of their large readerships in these cases, rallying support through social media and other channels.
Timothy Young’s case illustrates the need to protect your trademark rights. The Huffington Post and Chipotle will not change the name of their joint project unless forced to do so. Mr. Young has chosen to take the non-litigation route, which might prove detrimental to his case. If he does own superior rights, he needs to enforce and protect them. We will learn in time if his refusal to do so does indeed diminish his trademark rights.
The trademarking process does not end when you receive a federal trademark registration. It doesn’t end until you abandon your rights. From the start you must choose a strong mark. Then you must follow the USPTO’s process. Then, once registered, you must take all steps to prevent others from infringing on your mark and capitalizing on your hard work. For bloggers, many of whom have turned their blogs into businesses, this is more important than ever.
Xavier Morales is a trademark attorney who specializes in trademark search, registration, and protection. A 2005 graduate of Harvard Law School, he owns his own firm, The Law Offices of Xavier Morales, which can be found at SecureYourTrademark.com.
Originally at: Blog Tips at ProBlogger