To Trademark or Not To Trademark?

To Trademark or Not To Trademark

Trademark Tips for Small Businesses | Part 1

When I started my business “damalijewelry” in 1990, I did not consider getting a trademark for the name “Damali”. My reasoning was that the name Damali, which in Arabic means 'beautiful vision', was a beautiful name that resonated with me, and I figured that the world is big enough for other people to use it if they wanted to. I was naïve.

Tip #1: -> Naïveté has no place in business! <- Experience comes with age, but continue to learn as much as you can about your niche and gain more understanding of what it takes to be in business for yourself!

Had I took my time and learned as much as I could about setting up a business and securing my assets, I would have applied for a trademark the minute I decided to use 'Damali' as my business name. Instead, wanting to get to work as soon as possible and get my dream started, I registered the business with the state I lived in (Florida), which included a fictitious name search in the state’s database. ((If you're starting a sole proprietorship or a partnership, you have the option of choosing a business name or dba (doing business as) for your businesses. This is known as a fictitious business name.))

Tip #2: Procedures for searching and filing for a fictitious name vary among states, so do your research based on what state you live in. Check your county offices first! In many states, all you have to do is go to the county offices and pay a registration fee to the clerk. In other states, you also have to place a fictitious name ad in a local newspaper for a certain amount of time. The cost of filing a fictitious name ranges from $10 to $100.

This search ultimately found no results, meaning no one else was using the name "Damali" for business purposes. That’s all I needed to know (or so I thought). I never ended up filing for a trademark of the actual name. Fast forward twenty years later and my jewelry business, damalijewelry, has an established following, steady sales, and a website. Then one day an email came from a woman who stated that I was infringing on her business by using the name Damali for my jewelry business. Wait, what??

Turns out, someone took the name 'Damali' and trademarked it. I decided to do a bit of research and found that a woman started doing business almost twenty years after I did, made jewelry very similar to my work, and was now telling me, the original Damali, to quit using the name, my name. I was stunned, speechless, devastated. This was my passion. This is my passion! All kinds of feelings were racing through me: anger, disappointment, sadness. I was dejected one minute and defiant the next. I had a website, Facebook page, Instagram, Etsy, Pinterest, printed banners, business cards etc., and I had finally made it to the top of Google search for goodness sakes! But I had no choice to stop using the name, and it wasn’t worth risking a lawsuit.

Tip #3: If you do not have a trademark for your business, constantly continue to do your research every few months or so on whether or not more people have used the same name for similar businesses and if they have gotten a trademark! This may help avoid unnecessary shocks as well as unexpected cease and desist letters/emails.

Nevertheless, I dragged my feet and took my time dismantling my passion. Then the second letter came, this time from a paralegal moonlighting as an attorney, telling me to cease and desist using the name 'damali' for selling jewelry or they would take me to court.

A Trademark! That woman getting a trademark trounced my twenty years of using Damalijewelry, even with tangible proof that I am the original. It didn’t matter. A trademark is a symbol, word or words legally registered or established for use by a company or product. Having a trademark means no one else can legally use your symbol, word or words for profit without your permission. I could still use the name Damali for other products such as clothing, bags, etc., just not jewelry. So, after I created my new business name, I decided to apply for my own trademark before I used the name publicly. We were not having a repeat of that heartbreak! Getting a trademark is not as difficult as it appears to be, and despite what everyone says, you do not need an attorney. I completed the process myself, and yes sometimes the struggle was real, but I made it through the process and received my 'MaliMasani' trademark certificate in April 2019.

Tip #4: Although it is not required or mandatory to hire an attorney when registering with the USPTO, especially if you live in the US, you may want to do your own research on whether or not hiring an attorney is right for you. A U.S.-licensed attorney who specializes in trademark law can guide you through the registration process and provide legal advice. However, it is not always necessary!

 

In Part 2, I’ll discuss the application process of getting a trademark, how long it takes from beginning to end, and some of the steps involved. Most important, the cost of acquiring the trademark online (which was considerably less than if I had hired an attorney.)

 

 

Stay tuned... & follow @malimasanijewelry on FB & IG for updates!