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Posts Tagged ‘Registered Trademark’

I must confess that I didn’t get this right first time either.

When starting my Tikitagi company March 2008, I did take care of the web domains and such. Only after bringing aboard our respected advisor (ex-eBay lawyer) we paid attention to the trademark issue. As the plan is to expand outside Finland with our service, it would be important that we can expand with the name we have selected.

The first thing he did was checking whether we had our name registered. It wasn’t. He also noticed there was another company in Belgium which had almost the same name (Tikitag, just the “i” missing from the end). I immediately filed for the trademark registration in Finland and hoped for the best. There was practically no way knowing if Tikitag had already filed national trademark application as well. They do not show up immediately, neither do the European Union Community Trademark registrations so we could only hope for the best.

As it turns out, the other company (Tikitag) finally had filed their application six weeks later than we did. So we had the national priority for the The Community Trademark. That one has to be filed within 6 months of the national trademark in order to have the priority advantage. We filed for that on November 5th, 2008.

To our great surprise, and before we could even offer our trademark for them to be bought (which we thought we should do as Tikitag was owned by Alcatel-Lucent), they made a surprise announcement in February 2009:

On February 15, 2009, we will launch several new features and applications for consumers, businesses and application developers. Additionally, due to a trademark issue, we have decided to change our name. These changes will NOT affect how you use the service or its associated web site. It is simply a branding change in order to avoid any disruption in the current use and future growth and development of the service. The only small change will be that a new PC or Mac client will…”

The new name they chose was “touchatag“.

So what do we learn from this?

First of all, if you are a startup and want to one day (if not already) make your service international, pay attention. It really does not make any sense to build your service with one name in your home country, and then change it when you go international. There are of course cases where also that may work, but you lose a lot concerning branding and recognition.

Second, in some cases trademark matters more than patents concerning your startup’s valuation. So as soon as you’ve made up your mind concerning the name of the company, take care of the trademark. And if your investors haven’t asked about this, they should have. It’s good to have trademarks in order also in your “vendor due diligence” at the stage when you prepare for searching for funding.

  • Check that the most important web domains are available
  • Check that applicable twitter name is available (you may also want to reserve words in other services, such as Facebook)
  • File the national trademark application (it’s easy to do, you don’t need any external experts for this, necessarily)
  • Within 6 months, file the international trademark application

It is true that you can just start using the ™ sign without registering it. After some years you in a way earn the trademark, art least so that it should not be possible for others to own it. But why wait so long and take the risk? The sign for “registered trademark” ie. ® can only be used if it actually has been registered.

It always surprises me how even experienced marketing agencies can mess these things up. Some people still remember how Finnish Telecom company changed the name to “Sonera“, paying hundreds of thousands of euros for the new name and look&feel. Only to find out that the web domain sonera.com was already taken! And it still happens, companies pay agencies big money to invent new product names, only to find out that the domain names are taken so the either have to get another name or pay a lot for the domain.

After “winning” the right for our dear Tikitagi name we decided, however, to change our name! After all the trouble we thought it makes sense to have a better name anyway. So we changed the name to Jobita. And registered all the necessary things, now with the routine already.

So what happens if you do have your trademark registered and somebody comes to the market with similar name? If they are in the same product/service category than you, they shouldn’t be able to use the name, but you better consult your lawyer. If the other company is a big international company, you might also get lucky and sell your company to them. It can also turn out to be a problem, as big companies have a tendency to calculate that you don’t have resources to attack them. So “Sue us” might also be an answer from them.

And oh yes, do you happen to be in the RFID/NFC business? I could sell you the Tikitagi brand, already almost associated with that business. And the brand is protected all over Europe!


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I must confess that I didn’t get this right first time either.

When starting my Tikitagi company March 2008, I did take care of the web domains and such. Only after bringing aboard our respected advisor (ex-eBay lawyer) we paid attention to the trademark issue. As the plan is to expand outside Finland with our service, it would be important that we can expand with the name we have selected.

The first thing he did was checking whether we had our name registered. It wasn’t. He also noticed there was another company in Belgium which had almost the same name (Tikitag, just the “i” missing from the end). I immediately filed for the trademark registration in Finland and hoped for the best. There was practically no way knowing if Tikitag had already filed national trademark application as well. They do not show up immediately, neither do the European Union Community Trademark registrations so we could only hope for the best.

As it turns out, the other company (Tikitag) finally had filed their application six weeks later than we did. So we had the national priority for the The Community Trademark. That one has to be filed within 6 months of the national trademark in order to have the priority advantage. We filed for that on November 5th, 2008.

To our great surprise, and before we could even offer our trademark for them to be bought (which we thought we should do as Tikitag was owned by Alcatel-Lucent), they made a surprise announcement in February 2009:

On February 15, 2009, we will launch several new features and applications for consumers, businesses and application developers. Additionally, due to a trademark issue, we have decided to change our name. These changes will NOT affect how you use the service or its associated web site. It is simply a branding change in order to avoid any disruption in the current use and future growth and development of the service. The only small change will be that a new PC or Mac client will…”

The new name they chose was “touchatag“.

So what do we learn from this?

First of all, if you are a startup and want to one day (if not already) make your service international, pay attention. It really does not make any sense to build your service with one name in your home country, and then change it when you go international. There are of course cases where also that may work, but you lose a lot concerning branding and recognition.

Second, in some cases trademark matters more than patents concerning your startup’s valuation. So as soon as you’ve made up your mind concerning the name of the company, take care of the trademark. And if your investors haven’t asked about this, they should have. It’s good to have trademarks in order also in your “vendor due diligence” at the stage when you prepare for searching for funding.

  • Check that the most important web domains are available
  • Check that applicable twitter name is available (you may also want to reserve words in other services, such as Facebook)
  • File the national trademark application (it’s easy to do, you don’t need any external experts for this, necessarily)
  • Within 6 months, file the international trademark application

It is true that you can just start using the ™ sign without registering it. After some years you in a way earn the trademark, art least so that it should not be possible for others to own it. But why wait so long and take the risk? The sign for “registered trademark” ie. ® can only be used if it actually has been registered.

It always surprises me how even experienced marketing agencies can mess these things up. Some people still remember how Finnish Telecom company changed the name to “Sonera“, paying hundreds of thousands of euros for the new name and look&feel. Only to find out that the web domain sonera.com was already taken! And it still happens, companies pay agencies big money to invent new product names, only to find out that the domain names are taken so the either have to get another name or pay a lot for the domain.

After “winning” the right for our dear Tikitagi name we decided, however, to change our name! After all the trouble we thought it makes sense to have a better name anyway. So we changed the name to Jobita. And registered all the necessary things, now with the routine already.

So what happens if you do have your trademark registered and somebody comes to the market with similar name? If they are in the same product/service category than you, they shouldn’t be able to use the name, but you better consult your lawyer. If the other company is a big international company, you might also get lucky and sell your company to them. It can also turn out to be a problem, as big companies have a tendency to calculate that you don’t have resources to attack them. So “Sue us” might also be an answer from them.

And oh yes, do you happen to be in the RFID/NFC business? I could sell you the Tikitagi brand, already almost associated with that business. And the brand is protected all over Europe!


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