On May 9th, we learned that the United States Patent and Trademark Office (USPTO) has VERY quietly released a proposal to increase their fees.

The price is going up!

We shared this news with our newsletter first. So you should sign up here!

This price change is estimated to go into effect in November 2024, but it wasn’t too long ago that the USPTO increased some of their fees in 2021, after COVID left them severely backed-up.

Now, not only are they planning to increase the cost of items/services AGAIN, but they also plan to charge for items that have never incurred an additional fee before! Increased fees exist for almost everything ranging from $50 to $200+. Under this new proposal, a trademark application for 1 mark/class, currently $250, will start at $350 with additional fees for simple customizations.

Bottom line: They are literally brainstorming “creative” ways to make you spend MORE money.

They say that this price change is all in an effort to improve processing times, recover Office costs, and enhance the quality of incoming applications. And they conveniently failed to mention that this may also be an attempt to combat the HOARDS of fraudulent Chinese applications left uncheck for YEARS that are slowing down the Office.

But still, we hate to see that this is their proposed solution.

It seems that once again, they’ve determined that the easy fix to their backlog is to raise the bar to entry. Decrease public access to trademark registration by increasing the financial commitment of new trademark applicants.

And though increased costs would very likely discourage unserious entrepreneurs from filing trademarks, unfortunately, many SERIOUS business owners will be penalized, as well. Especially small business owners with big dreams and real hustle. They’re going to be the ones to feel the financial strain AND the pressure to self-file and risk making a careless mistake.

Over 60% of trademark applications filed are initially rejected.

These odds decrease with an attorney. These DIYers, hoping to save money, in fact stand to lose funds AND time spent if they (1) don’t have an attorney-provided search report, and (2) make errors too serious for an attorney to later come in and correct.

More improperly drafted applications and uninformed applicants won’t “improve the quality of incoming applications” nor processing time. The USPTO will just collect their money, and the DIYers will be without a trademark certificate.

So if you’ve been procrastinating on protecting your brand, this is a sign to get serious about it. Decide whether your brand name, logo, slogan, and/or other brand assets are worth protecting!

You don’t want to deal with these upcoming fees nor the eventual influx of applications before the fee increase.

And if you think your brand is worthy of protection, let’s get started on your trademark journey immediately! 

Put some (R)espect on your name!

POP QUIZ: Take our Brand Name Quiz

Find out whether your brand, product, course, or event name is ready for trademark registration! Take our quiz below.

Since opening this Firm, I’ve dreamed of having an office space where I can proudly put our accomplishments on display. Like a parent sticking their child’s artwork on the fridge. Or a trophy cabinet.

And I thought this was a dream delayed due to the fact we’re a fully virtual Firm.

Until I had an epiphany, I can still make this dream a reality. Just make it virtual.

It’s so obvious; I can’t believe I didn’t think of this before. So today, I’m so happy to present to you Our Trademark Wall of Fame!

If you’re starting a business or launching a product/service, you’ve probably heard of both LLCs and trademarks. Both of these terms are essential for any business owner to understand, but they serve entirely different purposes! In today’s post, we’ll break down the differences between LLCs and trademarks and explain why your business probably needs both!

What is an LLC?

LLC stands for “Limited Liability Company”. It is a type of business entity that separates and protects a business owner’s personal assets from that of the business’s liabilities.

An LLC has its own tax ID number (EIN), can own assets, can enter into contracts, and can sue or be sued. As such, registering an LLC simply signifies that you are operating “X Business Name within X state”. This along with your EIN helps the IRS identify your business come tax season.

So in simple terms, your LLC’s name could be your trade name, i.e. the name your business is commonly known as or the name you use when advertising or doing business (DBA – “doing business as”). (And your trade name may even be the same as your trademark if you choose to register your brand name).

One of the main advantages of forming an LLC is that it provides personal liability protection. This means that if the business is sued or owes debts, the members’ personal assets, such as their homes or cars, are protected. Another major advantage of an LLC is that it offers flexibility in how your business is managed and taxed.

However, a disadvantage — or, a very popular misconception among new entrepreneurs — is that registering your LLC prohibits others from using your LLC name aka trade name. That is completely false.

Two or more businesses can share the same name as long as they operate within different states. The purpose of an LLC is not to prevent others from using your business name; it is just intended to identify the name and state of your business’ operations.

What is a Trademark?

A federally registered trademark, on the other hand, is a symbol, word, or phrase that identifies and distinguishes a product or service from others across the country.

The purpose of a trademark is to protect a company’s brand identity and prevent other businesses from using your exact and/or a similar mark (brand name, logo, slogan, or other source-identifying mark) that could cause confusion among customers.

Though both LLCs and trademarks —specifically a brand name trademark — have a “name” component to them, trademark registration is what protects your business’ money-makers, making it the most valuable business asset you can own. 

Once a trademark is registered with the United States Patent and Trademark Office (USPTO), the owner has exclusive rights to use it in connection with the products or services it represents. For a full list of all the benefits granted through trademark registration, check out this blog post.

And we’ve created a simple Venn Diagram to help you remember:

Difference Between LLC and Trademark

So now that we’ve defined LLCs and trademarks, let’s explore the differences between them.

Legal Entity vs. Intellectual Property

We alluded to this before, but a major difference between these two terms lies in the fact that one is a legal entity and the other an intangible property.

I like to say that your LLC is how the state recognizes your business, but your trademark is how the country (and the world) identifies your brand.

By forming an LLC, the IRS knows that you are operating X Business Name within X state. However, by registering your trademark, the entire country is put on notice that X Business Name — or any other other mark — belongs to this source and prohibits anyone from using anything identical and/or remotely similar to X Business Name in your exact and/or similar industry.

Ownership and Liability

Another significant difference between an LLC and a trademark is ownership and liability.

An LLC is a business entity owned by one or more members, whereas a trademark is an intellectual property right owned by an individual, multiple individuals, or a company, like an LLC.

And in fact, many prefer that their LLC own their own trademark(s) rather than to file them as an individual(s), making them subject to their own personal financial situation.

Moreover, remember: LLCs offer personal liability protection to the members, whereas trademarks do not.

Registering your trademark offers an entirely different type of protection, specifically “brand protection”, as it mimimizes customer confusion, distinguishes your brand from copycats, and ultimately upholds your business’ reputation by preventing identical and/or similar marks from entering in the marketplace.

Registration Process & Costs Associated

Lastly, the process and costs of registering an LLC versus registering a trademark couldn’t be any more different!

To form an LLC, you must file an articles of organization within the state the business will operate and pay a fee that varies from state to state.

In New York, for example, the state filing fee is $200 with a biennial renewal fee of $9. Notwithstanding the 6-week Publication requirement for New York LLC’s, that many DIY entrepreneurs unknowingly skip, the process is relatively straight-forward and less time-consuming.

Registering a trademark, on the other hand, is a lot more complex and more expensive!

Currently, due to COVID-19, trademark registrations take an estimated 12-18 months to complete compared to the previous 6-9 months timeline. And it takes a minimum of 9 months before your application is even reviewed by an Examiner compared to the previous 3-month wait! With more time on their hands, so many entrepreneurs began to take their brands more seriously, including filing trademark applications. Now, the USPTO is severely backed up.

This means that if you choose to work with an attorney, you will likely be working on this project for over a year. 

Furthermore, the process of registering a trademark also involves more steps when working with a licensed trademark attorney. We perform a comprehensive trademark search, review the results and provide you with our legal analysis in the form of an Opinion Letter, research and collect information needed for your application, draft and file your trademark application, monitor for conflicting marks, respond to potential Office Actions issued by an Examiner, and conduct other ancillary services. 

Due to the amount of research and time dedicated to a single trademark application, registering a trademark is more expensive than forming an LLC. The cost of an application alone ranges from $250 to $350 per mark/class.

Final Thoughts

In summary, an LLC and trademark are two essential concepts that every business owner should understand and likely own. They serve entirely different purposes! 

And so, deciding whether to form an LLC or register a trademark depends on the business’s needs and goals. If personal liability protection is a concern, forming an LLC may be the right choice. If protecting a brand’s identity and preventing other businesses from using a similar mark is the priority, registering a trademark is necessary. And we venture to think that both will be important to new entrepreneurs.

Our Firm can provide you with valuable guidance in setting your business up as an LLC or with registering a trademark. Book a Discovery Call or Trademark Discovery Call for your legal solution!

In today’s business landscape, trademarks are an essential aspect of any brand’s identity. They provide consumers with a quick and easy way to identify a product or service, and they help businesses establish and protect their unique identities in the marketplace. However, before applying for a trademark, it is crucial to conduct a trademark search report.

Burger King’s and Katy Perry’s recent loss is evidence of just that. In today’s blog post, we’ll be discussing the importance of conducting a trademark search report and why it is essential for any business looking to establish a unique brand identity. We’ll be using Burger King and Katy Perry as our examples.

What Do Burger King and Katy Perry have in common?

Katy Perry as a hamubrger at the Met Gala 2019

As a result, Katie filed suit against the megastar for trademark infringement. And as of a couple days ago, Katie was awarded financial damages against Katy Perry in an amount to be determined next month.

For trademark purposes, it doesn’t matter that the spellings aren’t exactly the same. If two brands still have the same phonetic pronunciation and are providing similar products/services, the two brands can not co-exist. This would lead to consumer confusion, which is wholly counterproductive to trademark law.

Now, I honestly can’t say that I’m surprised that Katy Perry ran into a conflicting trademark. She is using a name that is so common. And I imagine there’s so many people with the exact spelling or some other variation of both “Katy” and “Perry”, who dream of being business owners. When a name is that common, you have to be first to register it!

And so, in addition to this being a reminder to build a distinctive brand name, this tale also demonstrates the importance of conducting a trademark search report.

What is a Trademark Search Report?

Before applying for a trademark, it is crucial to conduct a comprehensive trademark search report.

A trademark search report is a comprehensive search conducted to determine whether a proposed trademark is available for use and registration. It helps identify any existing trademarks or competitors that may conflict with your proposed trademark.

This report typically includes a search of both registered and unregistered trademarks in the relevant jurisdiction(s) and can provide information on similar or identical marks, pending applications, and expired trademarks. These reports also include information on common law trademarks, which are unregistered marks that have been used in commerce, but have not been registered with the relevant trademark office.

The trademark search report is an important step in the trademark registration process as it (1) helps to ensure that the proposed trademark is distinctive and unique enough to be registered, and (2) helps prevent potential legal issues if the proposed mark infringes on any existing trademarks.

These reports are provided by trademark attorneys with expertise in trademark law and trademark searching. With the help of powerful algorithms, we are able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, worldwide web results, social media, and more.

Benefits of a Trademark Search Report

Now that you understand what a trademark search report is, let’s discuss the benefits of this report for your business’ plans:

1. Saves Time & Money

One of the major benefits of conducting a trademark search report is saved time and money. Conducting a tradmeark search report can prevent you from investing time and resources into a trademark that cannot be registered or protected.

This means that your trademark search report report should ideally be completed prior to investing any money into a mark, whether it’s your brand name, logo, slogan, or some other source-identifier! It makes little sense to invest money into a mark before learning whether it will be available for your exclusive use.

Trust us. The last thing you’ll want to hear is that you’ve invested time and money into a trademark that cannot be used, and you will need to start from scratch. These are always difficult conversations to have, especially if you have already started to develop an attachment to your mark.

So after you’ve brainstormed a brand name, your immediate next step should be to conduct a trademark search report, not hire a web designer or graphic designer! Unfortunately, many business owners tend to do this out of order because they are unaware of the trademark process. So, if you’re a business owner reading this or know of any entrepreneurs, please pass this info along to your entrepreneurial friend.

2. Avoids Legal Issues

As mentioned previously, conducting a trademark search report also helps to prevent legal issues down the line.

A trademark search report can help identify any potential conflicts or infringement with existing trademarks. Having this report can prevent a business from unknowingly infringing on another company’s trademark and potentially facing legal action or even having to rebrand entirely.

In 1971, resources were limited. Burger King may not have reasonably been able to locate the local Australian restaurant operating under the same name.

However, the reports of the 2000s absolutely can identify these users! Sometimes, even a simple Google search can reveal so much. So Katy Perry’s team may not be able to share the same excuse.

It’s unclear whether Katy Perry discovered her competitor through a search report. However, what IS clear is that (1) Katy selected a non-distinctive name, as many celebrities who operate a brand under their personal names do; and (2) though she and her team were aware of the conflicting user, they proceeded to willfully infringe on Katie’s trademark rights withour regard to their previously failed attempts.

Katy’s team should have just found a more creative way to provide merchandise that excluded use of “KATY PERRY”. I’m sure this might be difficult, but these creative geniuses can figure something out! And it would have been cool for her to market this merchandise as something made exclusive to the fans of that continent. Now, unfortunately, they’ll have to pay up and rebrand if they wish to sell merchandise in Australia again.

This is why it’s best to rebrand at the onset before you’ve invested any more money into a trademark rather than rebrand after making large expenses and an expensive lawsuit.

3. Identifies Weaknesses

Last but not least, a trademark search report is important because it can help a business identify any potential weaknesses in their proposed trademark.

It is absolutely crucial that any proposed trademark submitted for registration is distinctive and unique enough to stand out in the marketplace. Conducting a trademark search report can help a business owner identify any similar trademarks or potential issues that could weaken their proposed trademark’s strength, as well as, provide insight into a business’ future expenses.

For example, if the report shows that there are many competitors with a “confusingly similar” trademark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is valuable information you should know prior to investing too much into your trademark and brand.

All the more reason to conduct your report PRIOR to hiring a professional to build your mark and/or marketing under your mark.

Conclusion

Photos from my time spent in Sydney, AU

Fall 2013 & Feb-Nov 2015

As an entrepreneur or business owner, I’m sure you can appreciate how important it is to protect your brand.

Your brand is the identity of your business and it’s what sets you apart from your competitors! And if by now you haven’t realized, one of the most effective ways to protect your brand is by registering a trademark!

We’ve defined it before, but as a quick refresher:

A trademark is a symbol, word, or phrase that distinguishes your goods and/or services from those of your competitors. It can be a brand name, logo, slogan, colors, or even a sound or a scent.

Registering a trademark gives you exclusive rights to use that mark in connection with your business, and it can provide numerous benefits that can contribute to your overall business success!

Here are some reasons why you should consider registering a trademark:

1. Protects Your Brand

Trademarks protect your brand identity and help prevent competitors from using similar marks that could confuse customers. By registering a trademark, you prevent others from using your brand name or logo for their own profit, which can ultimately dilute your brand’s value and affect your brand’s reputation.

For example: Imagine that you own a successful coffee shop named “Mocha Joe’s” that has a recognizable logo featuring a steaming cup of coffee.

Without a trademark, another coffee shop in your area could easily create a similar logo with a steaming cup of coffee and the name “Mocha Bros” to try and capitalize on your brand’s success. This could lead to customer confusion and ultimately hurt your business! 

You should be the only person allowed to capitalize off your hard work!

2. Builds Trust and Credibility

People love to support brands that take their business seriously!

When customers see your registered trademark, they know that your business is legitimate and credible. A registered trademark gives customers confidence in your brand, and they’re more likely to trust and do business with you.

For example: Imagine that you’re a small business owner looking for a supplier of high-quality organic ingredients for your products. You come across two suppliers with similar products and pricing, but one of them has a registered trademark while the other does not.

Which one would you choose? Most likely, you would choose the supplier with the registered trademark because it gives you confidence in their business.

You would assume that they are fully dedicated to their business, and in turn, fully committed to making their customers happy.

3. Prevents Legal Issues

By registering a trademark, you proactively protect yourself from legal issues that could arise from infringing on someone else’s trademark.

If you use a mark that is similar to another brand’s trademark, you could be liable for trademark infringement. This can result in costly legal battles and damage to your business reputation.

For example: Imagine that you’re a fashion designer who creates a line of handbags with a distinctive logo featuring your initials. You launch your brand and start to gain some popularity, but then you receive a cease and desist letter from a large luxury fashion brand claiming that your logo is too similar to theirs! Without a registered trademark, you could be forced to rebrand your entire business, which could be a huge setback.

This is also why it’s important to go through the process of trademark registration prior to building and investing into a mark. The best way to learn whether you’ve infringed on another brand is to obtain a comprehensive trademark search report with a licensed trademark attorney. Your attorney will provide you with valuable analytics, analyzing potential conflicting marks and brands, and provide you with legal strategy to circumvent these issues.

If we determine that you should rebrand due to a similar logo already in existence, then you’ll know the risks ahead of time and avoid wasting any more money on an infringing mark.

4. Increases Brand Value

A registered trademak increases the value of your business!

If you ever decide to sell your business, having a registered trademark can make it more attractive to potential buyers. A trademark is an asset that can be licensed or sold, which adds to your overall business value.

For example: Imagine that you’ve built a successful company that has a registered trademark for your brand name and logo. A larger competitor approaches you with an offer to buy your business. Having a registered trademark can make your business more attractive to the buyer because they know that your brand is legally protected and has a strong reputation.

5. Provides Nationwide Protection

When you register a trademark with the U.S. Patent and Trademark Office (USPTO), you gain nationwide protection for your mark. This means that no one else can use your trademark in connection with similar goods or services throughout the United States.

For example: Imagine that you own a restaurant in New York City that has a registered trademark for your restaurant name and logo. If someone tries to open a restaurant with the same name and logo in California, you can take legal action to prevent them from doing so.

Many entrepreneurs mistakenly believe that having an LLC alone can prohibit name and logo theft, but only a registered trademark is capable of doing that! Check out this blog post to learn the differences between an LLC and trademark.

If you’re ready to get started on your trademark journey, book a Trademark Discovery Call today to learn more!

6.Can Sue and Recover Treble Damages

In addition to the exclusive rights afforded to you through trademark registration, another added benefit is the ability to sue anyone who uses your trademark without permission.

If someone uses your trademark without permission, you may be able to sue them for trademark infringement. And if you win your lawsuit, you may be entitled to recover damages, including lost profits and any profits the infringer made from using your mark.

Furthermore, if the court finds that the infringement was willful or intentional, you may be entitled to treble damages, i.e. three times the amount of damages that you actually suffered as a result of the infringement. If you can prove willful infringement, you could potentially recover three times the amount of damages that you suffered.

Treble damages are a powerful tool for deterring would-be infringers and compensating trademark owners who have suffered losses as a result of infringement.

However, keep in mind, that proving willful infringement can be very difficult. You will likely want to work with a qualified trademark attorney to help you navigate this legal process.

7. Prevents Cybersquatters

“Cybersquatting” is the practice of registering, trafficking in, or using a domain name with the intent of profiting from the goodwill of someone else’s trademark. Cybersquatters register domain names that are identical or similar to well-known trademarks in order to divert internet traffic to their own website, potentially causing confusion among consumers and diluting the value of the trademark.

And unfortuantely, there are TOO many social media coaches and other online personalities encouraging other entrepreneurs to committ this very crime. Please do not do this!

Fortunately for you though, by registering your trademark, you can prevent cybersquatters from creating infringing domains. The Anti-Cybersquatting Consumer Protection Act (ACPA) makes it illegal for anyone to register a domain name that is identical or confusingly similar to a trademark with the intent to profit from it.

If someone does register a domain name that infringes on your trademark, you may be able to take legal action under the ACPA. This can include filing a lawsuit to recover damages and/or requesting that the domain name be transferred to you.

By registering your trademark and taking proactive steps to prevent cybersquatting, you can protect your brand and prevent others from profiting off your hard work and goodwill. This can help ensure that your business remains successful and profitable over the long term.

8. Blocks Infringing Products Bearing Your Mark

If you have a registered trademark, you can record it with the U.S. Customs and Border Protection (CBP) agency. This means that CBP will monitor imports to the United States and block any products that infringe on your trademark.

This service is particularly important if you manufacture products overseas or if you sell products online that can be shipped from overseas. In either case, you want to make sure that counterfeit or infringing products bearing your mark do not make it into the United States.

By recording your trademark with CBP, you give them the authority to seize any infringing goods at the border. This helps protect your brand and reputation, and ensures that counterfeiters are not able to profit from your hard work.

If you suspect that someone is importing infringing goods into the United States, you can work with a trademark attorney to file a CBP e-Recordation application. Once your trademark is recorded with CBP, they will notify you of any suspected infringing goods and take the necessary steps to prevent them from entering the country.

9. Can License Your Trademark

We touched on this a bit in reason #4, but another benefit of registering your trademark is the ability to license your trademark to other companies. You can give other businesses the right to use your trademark in exchange for a fee.

Licensing your trademark can be a lucrative way to generate additional income for your business.

For example: If you have a successful brand, you may be able to license your trademark to other companies that want to use your brand name to sell their own products.

When you license your trademark, you can control how it is used and ensure that the products and/or services being sold under your mark meet your quality standards. This helps protect your brand and reputation, and ensures that consumers associate your mark with high-quality products or services.

But before licensing your trademark, be sure to sit down with a trademark attorney to draft a licensing agreement that outlines the terms of the arrangement! This agreement should address issues, such as, royalties, quality control, and termination rights. Our Firm can help you work out a licensing agreement, as well. Book a Discovery Call to discuss our contract-drafting service.

10. Can Be Passed Down in a Will

The last added benefit on our list is all about legacy-making. When you register a trademark, you become the owner of that mark. As such, you now have the ability to transfer ownership of the mark to someone else. This means that you can pass down your trademark as part of your estate planning.

If you pass away without a will, your trademark may become part of your estate and be subject to distribution according to state law. This could result in your trademark being sold or transferred to someone who does not have the same vision for your brand as you did.

However, if you include your trademark in your will or trust, you can ensure that it is passed down to someone who shares your vision for your brand. This allows you to maintain control over your brand even after you are gone and ensure that it continues to be associated with the products or services you intended.

To pass down your trademark in a will or trust, you should work with an attorney who can help you draft the necessary documents. You should also make sure to keep your trademark registration up to date and ensure that your chosen successor is aware of their responsibilities as the new owner of your mark.

Final Thoughts

In conclusion, registering a trademark is an essential step to protect your brand and contribute to your overall business success. It can help prevent competitors from using similar marks that could confuse customers, build trust and credibility with your customers, prevent legal issues, increase your brand value, provide nationwide protection for your mark, and help you build a legacy for your future generations.

If you’re considering registering a trademark for your business, it’s important to work with a qualified attorney who can guide you through the process and ensure that your trademark is properly protected. We can help you search for potential conflicts with existing trademarks, file your trademark application, and enforce your rights if necessary.

Don’t overlook the importance of trademark protection for your business success. Take the necessary steps to register your trademark and secure your brand identity! It can make a big difference in the long-term success of your business.

Get started on your trademark journey today!

Thanks to The TTABlog’s latest blog post, I recently learned of the Trademark Trial and Appeal Board’s (TTAB’s) decision to uphold the United States Patent and Trademark Office’s (USPTO’s) refusal to register VETEMENTS as a trademark for various clothing items, including shirts, skirts, and sweaters, and for related retail store services. You’ve probaly heard of this major French fashion brand before!

In re Vetements Group AG, the TTAB upheld that Vetement’s mark(s) were “generic” and “merely descriptive” of their goods and services, and lacking in the “acquired distinctiveness” that would be needed to overcome these issues. We previously defined these terms for you. For the sake of time, you can check out our Glossary and/or read the following posts for more explanation on what they mean.

But for today’s blog post, I thought it would be a good idea to go over the main reason why VETEMENTS was denied registration and what you should take away from this case if you have developed a foreign language trademark. In this blog post, we’ll explain the “doctrine of foreign equivalents” and what it means for your brand.

What Is the Doctrine of Foreign Equivalents?

If you are a visual learner, you may enjoy watching the following video. It covers some of the main points that we’ll be discussed in this post.

The doctrine of foreign equivalents is a legal principle applied in U.S. trademark law that requires courts, the USPTO, and the TTAB to translate foreign words into English to determine whether they are registrable as trademarks, or confusingly similar to existing trademarks.

This doctrine is intended to protect consumers within the United States from confusion or deception caused by the use of same term in different languages. As a general principle, the doctrine is applied in situations in which an American consumer is likely to “stop and translate” foreign words into their English equivalent. And in fact, most modern-day languages are subject to the doctrine of foreign equivalents.

So, (1) if your business name when translated to English is still “generic” or is “merely descriptive” of the goods or services being offered, OR (2) if your name shares the same meaning as an already existing trademark in ANY language, then your mark will very likely NOT eligible for trademark registration.

In the latter scenario, the two marks would be considered too similar to coexist in the marketplace.

And today’s post discusses an example of the former. “Vetements” is a French language term that translates into English as “clothing”, making the mark generic, i.e. descriptive of the product itself. This is a big problem under trademark law.

Why Is the Doctrine of Foreign Equivalents Important?

The doctrine of foreign equivalents is important because it helps to prevent confusion in the marketplace and ensures that each business is given fair opportunity to promote their business.

The doctrine recognizes that consumers may be familiar with foreign languages and as such, may associate foreign terms with their English equivalents. By treating foreign terms as equivalent to their English counterparts, trademark law aims to protect consumers from confusion or deception.

Furthermore, the doctrine of equivalents ensures that unfair competition isn’t being created. As you can imagine, other businesses within the clothing and retail industry need to be able to use the word “clothing” when describing their own products. It would be unfair to allow one company to have a monolopy of a word that everyone would need to reasonably use in their business’ operations and marketing, regardless of it being stated in a different language. 

This means that in practice, when assessing the availability of a trademark, it is important to consider not only the exact words used, but also any foreign equivalents that may be considered too similar. For companies that operate globally or that have multilingual branding strategies, this can be a crucial factor to consider when developing and protecting trademarks.

Technically ALL trademark applications undergo an examination for foreign language equivalents. Even if the submitted brand name is in English, the USPTO will still check that the trademark doesn’t already exist in Spanish. However, when the submitted brand name is in a foreign language, this doctrine is particularly relevant because an applicant MUST translate their foreign language business name into English for USPTO records and to aid the USPTO Examining Attorney in applying this doctrine.

Vetements failed to consider trademark rules when creating their brand name and now they’ve run into this problem of genericness/descriptiveness. As long as they continue to use VETEMENTS, they will very likely continue to run into this issue globally.

In the United States, proving “acquired distinctiveness” can help a brand like Vetements overcome trademark refusal. However, this is no easy feat, even for a company with what I imagine is unlimited resources. Vetements Group AG failed to provide sufficient evidence to show that their brand name had gained enough fame and popularity to the American purchaser that the VETEMENTS mark is recognized as a source identifier and not a generic translation for “clothing”.

It wasn’t enough that less than 1% of the American population speaks French. 1% is still approximately 1.3 million speakers in the United States. And French is the “fifth most commonly spoken non-english language” in the U.S. These stats were significant in the TTAB’s eyes.

Vetements provided no survey evidence, as is common in these cases, to indicate that the public recognizes Vetements as a brand/source identifier.

Their evidence of recognition from fashion magazines was not convincing.

And Vetements also failed to show any evidence of their advertising expenditures, another common piece of evidence found in cases like these.

So overall, there are other forms of evidence that Vetements Group AG can provide to appeal this decision, however, their legal team would have much less work if they had picked a name that satisfies that trademark law.

This very likely explains why Vetements Group AG went through the effort to apply for trademark registration for mark VTMNTS, a new name without the vowels. And thankfully, this plan has paid off as this new mark makes their brand name more visually and commercially distinctive, and has already secured various trademark certificates.

How Does the Doctrine of Foreign Equivalents Impact Trademark Strategy?

The doctrine of foreign equivalents has a number of implications for trademark strategy. One of the most important is that it underscores the importance of conducting thorough trademark searches that take into account foreign equivalents. This means not only searching for exact matches to your proposed trademark, but also searching for foreign translations and transliterations that could be too similar.

Attorneys have access to powerful algorithms that allow us to locate trademark conflicts like this. With the help of these algorithms, our team is able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across the U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, web results, social media, and more.

Moreover, as alluded to previously, another implication of the doctrine of foreign equivalents is that it may be more difficult to obtain trademark protection for marks that are similar in meaning to existing marks, even if they are in a different language. The assumption is that consumers familiar with both languages will be confused if both brands were to co-exist.

Conclusion

To wrap things up, the doctrine of foreign equivalents is an important principle in trademark law and understanding this doctrine is critical to developing a comprehensive trademark strategy. 

It is important that you are aware of the implications of this doctrine for your trademark strategy and that you work with an experienced trademark attorney who can help you navigate the complexities of trademark law.

If you have not yet consulted with a trademark attorney regarding your foreign language trademark or any trademark for that matter, you may be missing out on vital analytics and opening yourself up to potential legal challenges, like consumer confusion and litigation.

Need Help?

If you’ve created a generic foreign trademark or your trademark already exists in another language for the exact or similar products and/or services, you may want to pick up our eBook, 10 Mistakes to Avoid for a Smart & Successful Brand Name.

In this eBook, one of the topics we cover is foreign language trademarks, including the exception to the rule, further explanation of the legal implications, as well as, how you should manually conduct a proper search for other potential brand name conflicts. Take advantage of our 50% off limited time offer!

Otherwise, it may be time for a rebrand.

We know that this news is often difficult to hear, but you’re definitely in for a harder road ahead if you continue down this path. You’ll waste more time and money, fighting for a mark that might not truly be worth it. Rebranding, though sometimes costly, will save you in the long run and help you secure the legacy you truly intended.

And if you need help selecting an entirely new business name, we have a service that can help! Check out our Brand Name Consultation, a 60 Minute Legal-Marketing hybrid session designed to create a name that is not only trademarkable, but also marketable within 1 hour. It’s our 1 Hour Trademark.

Conducted via video call, we guide entrepreneurs through the “legal science” of trademark law, introduce strategies that stimulate creative expression, and create a name that NOT ONLY avoids the most common trademark pitfalls, BUT ALSO captivates the attention of your target consumer! We can help you cut down on the brain fog and time that it takes to brainstorm with our proven methodology. Visit this page for more.

Book your solution below!

Your company’s trademark is one of your most valuable assets!

It’s what sets you apart from your competitors, builds brand recognition and trust, and is a crucial component of your marketing strategy. That’s why it’s essential to have a solid trademark management plan in place to ensure that you protect and maintain the value of your trademarks.

In today’s post, we’ll be sharing some tips to help you safeguard your business’ most valuable asset aka trademark.

1. Conduct a comprehensive trademark search

Before you start using a trademark, it’s essential to conduct a comprehensive search to ensure that your trademark doesn’t infringe on the rights of others.

A trademark search is an essential step in the process of trademark management!

Trademark attorneys have access to powerful algorithms that allow us to conduct an extensive search for any proposed business name, logo, slogan, etc. via U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, web results, social media, and more.

When conducting a search, we examine conflicting marks or names with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and more. Because all of these factors should be weighed and considered when deciding to build and invest in your trademark.

If there are many competitors with a “confusingly similar” mark to yours, you can expect to spend more money on marketing and SEO efforts to stand out among them. This is information you should know prior to investing too much into your trademark and brand.

2. Register your trademark

Once your trademark has been cleared for use, it’s important to register it with the appropriate government agencies.

By registering your trademark, you secure legal protection and exclusive rights to use your trademark in connection with your products or services across the country. This means that others are prohibited from using your trademark or a similar mark in a way that could cause confusion or deceive consumers.

In the US, businesses should file their application with the United States Patent and Trademark Office (USPTO). The registration process involves submitting an application that includes a description of the goods or services associated with the trademark, a specimen showing how the trademark is being used, and the appropriate filing fees.

The USPTO will then examine your application to ensure that your trademark meets certain requirements, including that it is distinctive and not confusingly similar to an existing trademark. If the USPTO approves your application, your trademark will be published in the Official Gazette for a period of 30 days (“Publication Period“) , and a certificate of registration will be issued.

Once issued, you must renew your trademark within the first 5-6 years post-registration with a declaration of continued use, and every 10 years post-registration to maintain your trademark. Failure to file these renewal documents will result in the loss of your trademark rights.

3. Renew your trademark

Your trademark will last indefinitely as long as you continue to use it properly AND file the necessary renewal documents to maintain it.

Remember: Once registered, you must renew your trademark within the first 5-6 years post-registration with a declaration of continued use, and every 10 years post-registration date to maintain your trademark’s active status. Failure to file these renewal documents will result in the loss of your trademark rights.

So it’s extremely important to keep track of renewal dates and to submit renewal applications in a timely manner to avoid losing your trademark rights and all the time and hard work put into securing your certificate in the first place.

4. Maintain accurate records

Maintaining accurate records of all trademarks in your portfolio is essential for effective trademark management. This includes keeping track of registration dates, renewal dates, and any changes to the trademark or its use.

You should keep copies of all relevant documentation, including registration certificates and trademark licenses. An organized system for keeping track of your trademarks can help you manage your portfolio more effectively and make it easier to enforce your rights if necessary.

5. Monitor your trademark

After your trademark has been registered, you are expected to actively protect and enforce your trademark rights to maintain their value and prevent others from diluting or infringing on your brand. Monitoring your trademark is how you do so.

Regular monitoring of your trademark ensures that your mark is being used in accordance with its registration and helps identify any potential infringing uses.

As a trademark holder, you should perform regularly scheduled monitoring of your mark(s) online, offline, and especially via USPTO. And with a trademark monitoring service, like our Firm’s, you can monitor easily. Our Firm uses trademark monitoring software to scan the internet for unauthorized use of your trademarks on a routine basis, helping you identify potential issues early on and take action before they become bigger problems.

If interested, you should book a Trademark Discovery Call to learn more about this service.

6. Enforce your trademark

Enforcing your trademark is essential to maintaining its value and preventing others from infringing upon your rights.

Methods of enforcement include sending cease and desist letters and/or letters of protest, filing infringement lawsuits, and even engaging in alternative dispute resolution methods, such as, mediation or arbitration.

It’s important to act quickly if you believe your trademark rights are being violated! Delaying enforcement can weaken your position and make it more difficult to protect your trademark! You can check out this blog post for more on what to do if your mark is being infringed.

7. Educate your employees

In addition to hiring a trademark monitoring services, educating your employees about trademark protection and the proper use of trademarks can help prevent unintentional infringement and ensure that your trademarks are used consistently and effectively.

As we mentioned before, your employees should be familiar with your trademark portfolio, understand the importance of protecting the company’s trademarks, and be familiar with your trademark policies and guidelines.

Consistent use of your trademarks can help build brand recognition and prevent confusion among customers.

Think you’re ready for trademark registration? Take our quiz and find out!

Final Thoughts

If you own a trademark, it’s essential to protect it from infringement!

Not only is it personally offensive, but trademark infringement can hurt your business in many ways, including damaging your reputation, reducing your sales, and causing a variety of legal issues.

In today’s post, we’ll be exploring how to protect your trademark and what you should do if your trademark is being copied by a competitor!

What Is Trademark Infringement?

As defined by the United States Patent and Trademark Office (USPTO), “trademark infringement” is the “unauthorized use of a trademark on or in connection with goods and/or services in a way that is likely to cause confusion, deception, or mistake about the source of the goods and/or services”.

To put simply, trademark infringement occurs when someone uses a trademark that is similar or identical to your trademark without your permission.

This manner of infringement can take different forms, but is generally, when someone uses a mark in a way that could create confusion with your trademark or “dilute” your mark’s distinctiveness, as was alleged in the recent case of Chipotle v Sweetgreen, regarding Sweetgreen’s new “Chipotle Chicken Burrito Bowl”, later renamed the “Chicken + Chipotle Peppers Bowl”.

Essentially, trademark infringement can arise when there is a similar brand name, product name, logo, slogan, or other source-identifying mark. And it can also occur both online or offline, in advertising, marketing, and/or sales.

The Impact of Trademark Infringement

When trademark infringement occurs, a business can be serverly impacted in various ways.

First and foremost, it can cause confusion among consumers, which can damage the reputation and goodwill of the business.

If consumers are unable to distinguish between the original trademark and the infringing trademark, they may end up purchasing products or services that are of inferior quality or have no connection to the original brand, leading to a loss of sales and customer loyalty.

Moreover, trademark infringement can also impact a business’ ability to expand its brand and product offerings.

When a third party uses a trademark that is similar or identical to the original trademark, it can create confusion in the marketplace and make it harder for the business to build brand awareness and recognition. This can hinder the business’s ability to enter new markets, launch new products, or engage in strategic partnerships or collaborations.

Lastly, in addition to these tangible impacts, trademark infringement can also have intangible effects on a business’s reputation and brand identity.

If a business fails to protect its trademark, it may be perceived as weak or ineffective in the eyes of consumers, competitors, and other stakeholders. This can damage the business’s reputation and make it harder to attract and retain customers, investors, and other key partners.

Overall, trademark infringement can have significant negative consequences for a business and its bottom line.

How To Protect Your Trademark

Now that we’ve defined trademark infringement and discussed the potential impact on your business, here are some steps you can take to protect your trademark:

1. Register your trademark

This goes without saying, but the absolute best way to protect your trademark is to register it with the appropriate government agency. In the United States, you should register your trademark with the USPTO.

Registering your trademark gives you legal rights to use the trademark in commerce across the country and helps you protect your mark from infringement.

2. Use your trademark correctly

Always use your trademark consistently and correctly! Your trademark should be used as a “source identifier” only, and not as a verb or common noun. This will help establish your trademark as a distinct identifier of your products or services.

3. Monitor your trademark

Keep a diligent eye on the marketplace (online, offline, and especially, the USPTO) to ensure that no one else is using a similar or identical trademark to yourself!

Create a regular and consistent schedule to search for infringers, whether you conduct this search weekly, monthly, quarterly, etc., OR hire a monitoring service, like ours, to handle this for you!

Trademark law requires that all trademark holders “police” aka montior their trademark against misuse and infringement or else, risk cancellation of their mark.

Many entrepreneurs do not realize that a registration certificate prevents against some future conflicts, but it does NOT prevent against all.

For example: a USPTO Examiner may issue an Office Action that blocks a “confusingly similar” trademark to your own from proceeding to registration. However, your competitor still has an opportunity to overcome this Office Action if they submit a strong enough response that adequately addresses the Examiner’s concerns. And because this process is subject to human error, there may be conflicts  and other factors out there that USPTO Examiners miss for a variety of reasons we can’t control. Very commonly, there are cultural issues that can be missed and lost in translation.

So, it is your responsibility to ensure that no other business or individual uses a similar or idential trademark to your own without permission or registers a “confusingly similar” trademark that would weaken the strength of yours.

In the above scenario, you would want to oppose the registration of that mark during its Publication Period (the 30-day period where the public can oppose the registration of a trademark for good cause). But if you’re not monitoring your mark properly, you can miss this crucial window!

After all, the USPTO will NOT notify you of any copycats or “confusingly similar” trademark applications that make their way to Publication! And you don’t want to miss this window as doing so will result in more legal fees and headache.

That’s why our Firm offers a trademark monitoring service to help you with policing your mark post-registration. That way you can always get ahead of any potential issue! We’ll search for conflicting brands and marks across the USPTO, state registrations, domain name registrations, Google, social media, and more on a consistent scheduled basis (either monthly or quarterly). If interested, you should book a Trademark Discovery Call to learn more about this service.

Failing to adequately monitor your trademark can result in harm to your business’ reputation (inferior knock-offs, for example), decline in profit, and potential cancellation of your trademark!

4. Educate your employees

Familiarize your employees with your business’ trademark portfolio! You should make sure that your employees understand the importance of your trademarks and steps that they can take to protect them, as well as, train them to recognize potential trademark infringement and to report it to you immediately.

5. Be Proactive!

It’s best that you register your mark as soon as possible! You don’t want to wait for someone to infringe on your trademark before you finally protect what’s rightfully yours! It’ll be A LOT more stressful then. Be proactive and take steps to protect your brand and mark before any problems arise. 

What If My Trademark is Infringed?

Firstly, we’re sorry to hear that has happened to you. Infringement is such a yucky feeling. If you discover that someone has infringed on your trademark, here are some of the steps you should take:

1. Collect Evidence

Monitor the infringing party’s activities, and collect and document evidence of infringement.

When collecting evidence, especially screenshots, make sure the evidence includes dates and times somewhere on the page. You can opt to save website pages as PDFs for proper timestamps. And for Apple users, be sure to set the date and time to show up on your desktop’s toolbar. Timestamps always come in handy!

2. Making Contact with the Infringer

If you have in fact registered your trademark, you can send a cease and desist letter to the person or company that is infringing on your mark. This letter should demand that they stop using your trademark immediately.

Our Firm can provide you with an editable cease and desist template, or draft a customized cease and desist letter to send on your behalf.

However, if you have not registered your trademark, then your next course of action is to obtain legal counsel! DO NOT CONTACT THE INFRINGER!!

More often than not, you will make the situation worse!

Cease and desist letters are most effective when/if you have a registered trademark. Sending one without having obtained an official registration is almost like an empty threat.

And even if you have filed your trademark, you should still not send a cease and desist letter until your mark is officially registered! You don’t want to encourage the infringer to find ways to block/”oppose” your application, like during your mark’s Publication Period. You want to be completely finished with registration process, with certificate in hand!

Furthermore, conversations between opposing parties over infringement often become particulary tense! A common mistake we find is that as tempers rise, the conversation quickly turns into threats of legal action. Without realizing, you can in fact encourage the other party to take legal steps that they were not even considering, like filing a trademark application!

And once that application is filed by your infringer, you can reasonably expect $10,000+ in legal fees and potential litigation to fight for your trademark rights!

Keep in mind: Though you may be the originator of the trademark, filing your application after your infringer will not sufficiently fix this problem. The USPTO processes and examines applications in the order that they are received. So unless there are previously registered or previously filed applications in conflict with your opponent’s trademark application, your subsequent application will not be reviewed or considered in the examination of your infringer’s. At that point, you’ll need to have a conversation with a licensed trademark attorney immediately to discuss your next steps if you wish to fight for your mark!

3. Filing a Lawsuit

If an infringing party refuses to stop using your registered trademark after receiving a cease and desist letter, you may need to consider mediation or arbitration to resolve the dispute, or filing a lawsuit to protect your interests.

Mediation and arbitration can be less costly and less time-consuming than going to court, and can help you reach a resolution with the infringing party. However, whether mediation or litigation is the best course of action should be decided between you and your attorney.

Final Thoughts

In conclusion, protecting your trademark is crucial to the success of your business! By registering your trademark and taking proactive steps to protect it, you can minimize the risk of infringement!

All entrepreneurs and businesses can benefit from trademark monitoring services, and should be setting aside a budget for brand protection!

That way if your trademark is ever infringed, you’ll be better prepared to take action quickly to protect your legal rights and your business!

MORAL: “Don’t adopt words that are descriptive of your business as trademarks! You may not like how close competitors can get”.

This post has been updated. Please see update below.

As a LOYAL and devoted customer of Sweetgreen, I frequently receive emails about all of their new offerings. 

In an email from April 5th, Sweetgreen promoted 2 new menu items. Their new “Roasted Chipotle Salsa” was the main focus, but immediately following that salsa promotion, was a smaller, almost footer-like ad of their new “Chipotle Chicken Burrito Bowl”.

Being the foodie and Sweetgreen addict that I am, I thought, “Hmm, I want to try that bowl”.

Nothing more. No red flags in my trademark-trained mind.

Never did I think that the very next day, April 6th, I would learn that Chipotle had filed a lawsuit against Sweetgreen earlier this week over alleged infringement of their CHIPOTLE® trademark in Sweetgreen’s “Chipotle Chicken Burrito Bowl” title. 

Some of my fellow trademark attorneys sent me a thread from Twitter user, @TessaVMolnar, regarding Chipotle v. Sweetgreen, and I couldn’t help but laugh and strongly agree with her analysis!

To put it bluntly, this case seems like a REACH. Chipotle’s legal team had to do some deep stretching and possibly pulled some muscles when drafting this complaint. And unfortunately for them, to anyone with a legal mind, it shows. Chipotle’s complaint was a laughingstock in the trademark community.

About Chipotle’s Complaint

In their complaint, Chipotle writes “…Sweetgreen is using Chipotle’s famous CHIPOTLE® trademark to sell a product that is very similar and directly competitive to Chipotle’s chicken burrito bowl. Sweetgreen’s conduct constitutes trademark infringement, trademark dilution, and [sic] false designation of origin, and deceptive trade practice”.

Though each of Chipotle’s claims have specific technical meanings, for the purposes of this article – and for furthering your legal knowledge, of course – I’ll provide a quick definition of “trademark dilution”. 

Trademark dilution “refers to the use of a trademark or trade name in commerce that is sufficiently similar to a famous mark that by association it confuses or diminishes the public’s perception of the famous mark” (Google).

And this definition is important because as Chipotle has stated in the introduction of their complaint, “Chipotle and Sweetgreen are unaffiliated companies who compete in the ‘fast casual’ restaurant industry”. Chipotle is making the argument that the public would erroneously believe that there is an affiliation or collaboration happening between the two companies due to Sweetgreen’s new “Chipotle Chicken Burrito Bowl”. This would affect the exclusivity rights afforded to Chipotle as a registered trademark holder and potentially harm their brand.

Now based on the above statement, the general public may think,

“Okay, I can see where they’re heading. ‘Chipotle’ is their brand name. Sweetgreen is using their brand name without their permission. Sweetgreen is in the wrong”.

However, this analysis is missing some very important trademark perspective!

Twitter user and professor at American University Washington College of Law, @Prof_Farley, tweeted the main takeaway of today’s post. What all entrepreneurs should take away from Chipotle v. Sweetgreen.

“Don’t adopt words that are descriptive of your business as trademarks! You may not like how close competitors can get”.

“Merely Descriptive” – Chipotle

We’ve discussed this before in this blog post and in this TikTok, but a “merely descriptive business name” is one of the worst business names that you can create. We’ll pop in a little excerpt to explain why.

Descriptive marks refer to words that DIRECTLY DESCRIBE a characteristic, ingredient, quality, feature, or purpose of the goods or services.

Descriptive marks require zero imagination or explanation. They’re no fuss and straight to the point, making them an unfortunate popular choice among entrepreneurs and especially, brick-and-mortar stores.

From a marketing perspective, these descriptive marks may seem like a great idea for search engine optimization (SEO) and “searchability”.

However, from a trademark perspective, a descriptive mark is one of the most troubling business names you can have. That is, because descriptive marks are notoriously rejected for trademark registration by the USPTO (United States Patent and Trademark Office) in an effort to avoid unfair competition.

One of trademark law’s main objectives is to remove unfair competition. Society is hesitant to allow one company to obtain exclusive ownership over a word/phrase/mark that other competitors would naturally AND reasonably need to use within their own business’ operations and advertising. And so, the USPTO is tasked with ensuring that companies do not receive an unfair advantage by monopolizing terminology and phrases that should be available for all.

Chipotle’s brand name aka trademark describes a popular ingredient found not only within their food items, but in Mexican cuisine in general — chipotle seasoning.

Luckily, Chipotle was able to obtain a registration for their trademark, CHIPOTLE. And I assume that registration didn’t come easy! However, unfortunately, that registration doesn’t come without problems because Chipotle has trademarked a word that other food/restaurant companies would reasonably need to use when describing their own products. So their trademark registration is already on somewhat shaky ground.

It makes sense for Sweetgreen and other competitors to want to describe the products of their food menu with the main ingredients in the item titles.

Sweetgreen does this quite frequently with their “Spinach Florentine Bowl”, “Hummus Crunch Salad”, “Hot Honey Chicken Plate”, etc. 

Food product names and menu titles commonly include the actual ingredients. Take a look at our IG post below. All of these companies have very similar brand names because they’ve all chosen to focus on the main ingredient of their product.

The genral public wants to know what they’re eating after all!

So it would be one thing — and a better argument — if Chipotle actually had a unique name and wasn’t named after a popular seasoning in Mexican cuisine. But because they are, their trademark isn’t as strong and protectable as it can be!

And that’s what makes the allegations in Chipotle’s complaint that much more ridiculous.

Chipotle’s Allegations against Sweetgreen

Please see Tessa’s thread for a FULL BREAKDOWN of Chipotle’s claims, but to focus on a few…

CLAIM 1: One of Chipotle’s claims of trademark infringement lies in Sweetgreen’s usage of capitalization in its menu items. Chipotle alleges that Sweetgreen’s “capitalization of the first letter of the word ‘Chipotle’ and on occasion displaying ‘CHIPOTLE’ in all capital letters” is evidence of copy-cat behavior. See the ad below.

It’s just strange. Should Sweetgreen not be able to capitalize letters in their menu as they’ve always done? Capitalization is a necessity for English language.

Though Chipotle’s team isn’t solely relying on capitalization as evidence of Sweetgreen’s infringing conduct, the rest of their evidence isn’t any better. The complaint is filled with weak, and honestly, just plain weird arguments like this one.

CLAIM 2: Another claim Chipotle has made is that Sweetgreen is using a bigger font for “Chipotle Chicken Burrito Bowl” and a similar color to Chipotle’s Adobe Red in their outdoor ads, hence creating an association. If an ad is about a specific product, why wouldn’t the product title be big & bold in your face? This is not normal evidence of trademark infringement. On the other hand, to be fair, the Adobe Red comparison could be a valid point, but as Tessa pointed out, many food companies use this red-ish color when advertising chipotle-related items because it’s the actual color of chipotle seasoning.

CLAIM 3: And what’s probably the most egregious claim, Chipotle alleges that Sweetgreen’s infringing conduct includes that Sweetgreen’s “Chipotle Chicken Burrito Bowl” “features very similar ingredients to Chipotle’s burrito bowls, including chicken, a grain base (such as rice), black beans, and salsa”.

Um….yes, Chipotle team. That is the point. It’s a burrito bowl made of chipotle-seasoned chicken. A burrito bowl has to have the essentials of an average burrito placed in a bowl…

But instead, the Chipotle team would prefer for Sweetgreen to use “Chicken Bowl with Chipotle” as an alternative title.

What?????? It’s hilarious! Given this evidence, I completely understand Sweetgreen’s lack of response to Chipotle’s first demand letter.

Moreover, I’m sure that Sweetgreen isn’t the first company to create a competing chipotle chicken burrito bowl either. As Tessa pointed out Old El Paso’s “Chipotle Chicken Burrito Bowl” exists.

When I visited my local Pathmark today, I was even able to spot the “infringing” product right away! Has Chipotle ever contacted Old El Paso? 

If they haven’t, I reason that it could be that Chipotle’s legal team finds issue with Sweetgreen’s particularly due to the fact that they are “unaffiliated companies who compete in the ‘fast casual’ restaurant industry”. Old El Paso in comparison is a food producer. Customers go to Chipotle and Sweetgreen to create their orders, whereas Old El Paso customers find their products in grocery stores to make at home. If there hasn’t been an issue between Chipotle and Old El Paso before, this can explain the lack of pushback.

Chipotle v Sweetgreen Outcome & Predictions

Nevertheless, at the time of writing this article, the only action Sweetgreen has taken to resolve this issue with Chipotle is to hyphenate the title “Chipotle-Chicken Burrito Bowl”. Whether that will be enough to satisfy Chipotle is unknown.

And from my review of Trademark Twitter, it appears everyone agrees that this complaint is … questionable. Though we all suspect that this outcome will ultimately be resolved in Sweetgreen’s favor if litigated, we’re all still very curious to see what Sweetgreen will say in response AND what litigation could potentially mean for Chipotle’s trademark.

After all, it’s a merely descriptive mark, which is already pretty weak on the trademark scale, and subject to genericide — “the process by which a brand name loses its distinctive identity as a result of being used to refer to any product or service of its kind” (Google); aka the death of a trademark — like this astute Twitter user stated below.

This matter clearly shows that Chipotle is using a word that others withinn their industry reasonably need to use in their own business and marketing. They can’t have a monopoly on this seasoning!

So Chipotle bringing this lawsuit potentially puts them right back in the eyes of trademark authorities, like the TTAB (Trademark Trial and Appeal Board), who can cancel their trademark registration for being generic/too descriptive! For this reason, Chipotle obviously needs to be VERY careful when policing their trademark and choose their battles against competitors wisely.

Only time will tell if this was a battle worth engaging in at all.

Case: Case No. 8:23-CV-00596 District Court, Central District of California.

UPDATE: Later that evening, on April 6th, CNBC reported that Sweetgreen renamed their item to “Chicken + Chipotle Pepper Bowl”. Click to read CNBC article.

Author’s Note: Though I personally wish that Sweetgreen didn’t yield to Chipotle’s request, — I stand by my opinon that Chipotle’s claims were a BIG REACH — I do understand that Sweetgreen may not have found that the impending money and litigation worth it.

At the end of the day, Sweetgreen doesn’t really have a dog in this fight. Sweetgreen isn’t in the business of strictly making Mexican cuisine. They’re not using chipotle seasoning in every food item on their menu. And the fact that Sweetgreen even hyphenated the name suggests that they were open to listening to Chipotle’s concerns and litigation-avoidant. The Sweetgreen team may have found that litigation just wasn’t worth it.

But maybe Chipotle will meet a more equally matched competitor in the future! You never know!

For now, the matter is resolved and we’ll assume both parties are happy to move forward.

POP QUIZ: Put Your Brand Name To The Test!

Designed with the most common trademark mistakes in mind, see if your brand name has what it takes for trademark registration! Hopefully, your brand name isn’t merely descriptive like Chipotle!

You wouldn’t believe the amount of times that I speak with entrepreneurs who unknowingly have named their business after themselves without understanding the legal ramifications of doing so.

And I can’t fault them from not knowing.

There’s just not enough education out there.

And with celebrities and other public figures naming every business venture they pursue after themselves, there’s no one telling the general public why it’s not safe to follow in their footsteps.

There’s no one telling them why they shouldn’t be creating eponymous brands.

Remember, these celebrities have lawyers and advisors who alert them of the dangers, who aid them in every aspect of their livelihoods! But us normal people?? We don’t have trusted professionals helping us with every decision we make.

We have to be resourceful, diligent, and hope we’re making smart decisions.

So, here I am on my soapbox for the 1000th time telling you, the resourceful entrepreneur, or anyone reading this – “PLEASE STOP NAMING YOUR BUSINESS VENTURES AFTER YOURSELF”.

And of course, I’m going to tell you why…

If you are a visual learner, you may enjoy watching the following video. It covers some of the main points that we’ll be discussed in this post.

What Does It Mean To Create a Self-Named Brand?

Many entrepreneurs mistakenly believe that naming their brand after themselves is the only way to feel a connection to their brand and to truly represent their legacy.

However, what most fail to realize is when you name your business the same as your personal name, your legal name no longer belongs to YOU. It belongs to YOUR company as one of its assets. In fact, it becomes one of your business’ most valuable assets aka a trademark.

We’ve talked about what’s a trademark before so review this blog post or our Glossary if you’ve missed it or need a refresher.

And because you’ve now made your personal name into a trademark, you stand a far better chance of losing the rights to your personal name once investors and big bucks get involved.

It happens all the time!

I often compare it to the notorious 360 music deals we always hear musicians complain about.

So often, eager entrepreneurs and creatives start an amazing brand, and name it after themselves for “legacy” or vanity reasons. And when the brand is growing bigger and better than ever, investors start getting involved and one of two things are likely to happen.

 Scenario 1

Either these creatives fail to truly read their contracts and sign over the rights to their name and likeness, like wedding dress designer, Hayley Paige, (formerly of Say Yes to the Dress) in exchange for more publicity, resources, money, fame, or whatever enticing offer.

Hayley Paige vs. JLM Couture

In fact, in a recent Instagram post detailing her ongoing legal battle to reclaim her name, Hayley states: “I signed an employment agreement, which I believe allowed my name to be registered as a trademark for a bridal collection I designed.”

And this is very likely the case! However, Hayley failed to understand that the trademark is an asset of the business, not her own. Had she hired a lawyer to properly advise her before signing this contract, she would have understood that using her personal name as her business name legally changes the relationship to your name.

Watch Hayley explain her current legal situation below.

Scenario 2

Or these entrepreneurs lose the controlling share of their business to investors. And once that happens, beware of any disputes or disagreements with your investors because your name belongs to the company.

These investors can outnumber and vote to do whatever they deem is best for the business even if it’s against your wishes or morals, like Chloe Coscarelli of fast-casual vegan chain by CHLOE, who has been fighting to regain control of her name and business since 2016 after disagreeing with her business partners’ decision to open non-vegan restaurants under the by CHLOE name.

And it’s not just eager young entrepreneurs at risk!

It happens to celebrities too! Celebrities who should know better with their teams of savvy lawyers and advisors! However, I can only assume that these celebs are willing to take such risks because they understand that their name and likeness holds so much weight.

These celebrities hope (and understand) that their “cool factor” does all the selling and convincing for consumers to buy their products/services regardless of the quality.

And so, they’ll continue to use their name and likeness as necessary if they really wish to branch out into different ventures and build an empire, like recent Forbes-credited billionaire, Rihanna Fenty.

Why You Don’t Name Your Brand After Yourself

Because what’s worse is that once you’ve lost the rights to your name, it’s gone forever.

It will continue to belong to the company in perpetuity as long as the company is still in business because remember, a trademark lasts forever!

And you will NOT be able to use your personal name to market or brand your next business venture if it’s within the same or similar industry.

For example, statements, like “a new line by Jaleesa Johnson” or “by Jaleesa Johnson” or anything along those lines will be strictly OFF-LIMITS.

To do so, would be to unjustly profit off the reputation and success of a company with its’ own proper trademark rights. It will not matter that it was originally your name or that you helped build the brand. You are now practically a complete stranger.

And what’s more – as consumers, we often don’t even realize that the original owner may no longer involved in their brand, which can make us incorrectly attribute strange decisions or company mistakes to the person and their reputation. Thus, further harming the owner after the fact…

And unfortunately, many celebrities and brands have fallen victim to this – Hayley Paige, Chloe Coscarelli, Joseph Abboud, Stuart Weitzman, the late Kate Spade, P. Diddy, Zac Posen, and many more.

After losing her first business, Kate Spade legally changed her name to Kate Valentine once she lost the rights to her name in order to start her 2nd fashion brand, Frances Valentine.

Zac Posen, though warned by one of his girlfriends not to name his brand after himself, still chose to do so. Now, thankfully he still has a role in his brand, but he has regretted his decision to name it after himself because “whoever is investing is in control”.

P. Diddy was only recently able to reclaim ownership of Sean John apparel brand for $7.551 million after selling a majority interest in his company in 2016 and retaining only a 10% stake. Since doing so, Diddy has been in and out of court with majority shareholders for YEARS fighting to regain control after repeatedly disagreeing with their business’ decisions.

And according to Hayley Paige,

“It is not enough for JLM that I cannot work and cannot use my own birth name. Now, JLM wants to strip everything from me — including my right to speak and draw. JLM wants to silence me in the public domain and financially drain me. That is neither right nor just.”

Additionally, Hayley claims that she has been unable to “maintain any employment” as she is unable to design and/or enter bridal until August 2022, and has missed out on opportunities, including tv and commercial appearances, due to her inability to use her own name.

Even Hayley’s social media campaign to legally change her name, like Kate Spade, has been thwarted by her former employers as a breach of her preliminary injunction.

And P.S. if you didn’t know, this is not unique to Hayley; her current position is VERY common in these sorts of contracts! [Essentially, the original owner has transferred rights to their name to their business via trademark and should a dispute between investors and original owner ever arise, the owner is estopped from using their name and working in their industry for a specific time period for non-compete reasons. This is standard industry practice.]

So, in summation, you don’t name your business after yourself because of legacy. Your legacy is actually more at risk when your business is a clone of yourself. 

What Should You Name Your Business Instead?

So now you’ve read all the legal ramifications, you’re probably wondering, what should you name your business instead?

If you’re looking to rebrand, the first thing you should consult is the Spectrum of Marks. The spectrum will help you understand what it means to create a strong business name capable of trademark registration.

And though technically, an individual’s name would fall into the fanciful/arbitrary side of the spectrum, the legal ramifications of this post, should persuade you to avoid using your name.

So for the reasons above, we STRONGLY encourage all entrepreneurs to create names that meet the spectrum, but avoid putting their personal name at risk.

The two exceptions we’ve created for this no-personal name rule are:

 (1) If your personal name is required in your business name as part of your profession’s code of ethics and/or license requirements, like in the medical or legal field; or

(2) If you, i.e. your person, is the product/service you’re selling. Think bloggers, motivational speakers, content creators, etc. If you’re operating as a celebrity would, where your personality and likeness is the brand, I can understand the decision to name your business after yourself.

However, if you’re providing some other service or a product, there is no need for you and your business to share the same identity.

Your business should be an extension of you, not your clone!

And consider this: Do you plan to be the only person providing the product/service to customers or will you hire a team one day? Do you really want to create the expectation in customers’ minds that they will work directly with you as you expand and grow? If yes, don’t let us stop you!

However, if you do foresee yourself expanding, our advice: Rebrand.

In fact…

💡 If you really LOVE the sound of a “name”, consider naming your business as you would your baby. We don’t mean create a junior! Give your brand a new identity.

Your brand can still have elements of you and your personality without sharing your personal name. After all, parents can share these features/similarities with their children without sharing the same identity as their child.

Need More Help?

If you’ve decided to still name your business after yourself OR a new baby name, you may want to pick up our eBook, 10 Mistakes to Avoid for a Smart & Successful Brand Name.

In this eBook, one of the topics we cover is the likelihood of successfully trademarking a personal name, i.e. first name, first & last name, two or more last names, initials, and other variations. Take advantage of our 50% off limited time offer!

Or if you need our help selecting an entirely new business name, check out our Brand Name Consultation, a 60 Minute Legal-Marketing hybrid session designed to create a name that is not only trademarkable, but also marketable within 1 hour. It’s our 1 Hour Trademark. Book below.