Avoiding Trademark Disaster
I love gun dealers. Gun shops are some of my favorite places, and I’ve spent more than a few pleasant hours over the kitchen table of a small gun dealer, taking delivery of a new treasure. Which is why it was so painful when I got a call for help from a gun dealer who was having a very “bad day.” He just got a scary letter from a big law firm demanding that he cease doing business under his current name, and threatening all sorts of financial and criminal penalties.
I’m talking about a perfectly honest, legitimate, and honorable guy who thought he’d be making a valued contribution to society by offering gun dealer services. But like countless others I see all the time, he made one critical mistake that killed his business. He fell into a fatal trap. I was a big part of it, and I’m here to tell you the story so you can make sure never to suffer that fate.
I’ve been a patent and trademark attorney for about 25 years. In the past 10-15 years, I have become the nation’s top firearms patent and trademark attorney, starting off as a gun nut, then working to do all I could do to serve and support the industry. I ended up turning my hobby into my career, and have loved every minute of it. (This probably sounds familiar to most new gun dealers!)
So I was truly glad to be able to help that gun dealer who was having a “bad day.” Here’s what happened.
How the New Gun Dealer Cut His Own Throat
Stephen had always been a gun nut, and his friends and family were always taking his advice about guns: where to shop, what to buy, and how to shoot. Stephen’s pals told him he should open a gun shop, because he spent lots of spare time hanging around his favorite gun shop (and giving helpful advice to customers when it was crowded). Some customers thought he worked there, and the owner eventually offered him a job. But Stephen didn’t want to work for someone else, so he looked into starting his own gun dealership. He figured maybe he could keep his day job, and work by appointment only. If things went well, early retirement would let him pursue the gun business on his own timetable.
Stephen knew that becoming a gun dealer (a Federal Firearms Licensee) can be a legal minefield. There are a hundred ways to screw up, and if you think of fifty of them, you’re a genius. (And you can go to prison for one small mistake). So he got all the best advice, followed the rules, got ATF approval for his business name, and registered with his state as a business. Stephen wasn’t afraid to invest in some good advice to do things right.
Stephen named his business “Academy Arms, LLC” because there was a police academy nearby that he thought would mean some good law enforcement customers, and because the name suggested that he was respected, knowledgeable and established. He got accounts on Facebook and Twitter with the name, and printed up brochures, cards, plus signs and banners for his gunshow booth. Of course, all his ATF paperwork had the “Academy” name, and Stephen was proud to see it on his FFL license document.
A Gun Dealer’s VERY Bad Day
I learned about Stephen’s business through unfortunate circumstances. An existing gun maker named Academy Tactical (all names changed for confidentiality) presumably sent his lawyer an email: “One of our customers just emailed us that they saw this Academy Arms guy on Facebook. Should we do anything?”
Their lawyer undoubtedly advised them that this was clear infringement of their trademark rights, and if they didn’t do anything to stop it, they’d end up devaluing or losing what may be the most valuable asset of their business.
Stephen had never heard of Academy Tactical. He was perfectly innocent in his logical reasons for picking his business name. The ATF and Secretary of State accepted his name, so he figured it was legally OK.
He even snagged the AcademyArms.com domain name! But Stephen wasn’t thinking about Trademark Rights.
Stephen started thinking about trademark rights too late, when he got that letter: “…cease and desist using any name with the word “Academy” for any firearm-related goods and services…” He called me in, and I told him that he didn’t have a leg to stand on, and was lucky that the other side was being nice, and offering him up to a year to transition to a new business name. When I have to send a letter like that, I usually urge my client to make it as sympathetic and gentlemanly as possibly, but strong enough to make sure that it gets taken seriously.
Stephen probably thought of how he’d agreed with his wife that he’d have a limited preset nest egg amount as seed money for starting up his business, until the profitable phase began. He invested in advertising, printing, signage, and all the legal processes. Every one of those investments was tied to the old name, and was basically wasted. Stephen knew that he’d have to come up with a whole new nest egg if he was going to make this work. I don’t know if he ever did.
If you’re wondering about the details of how Stephen should have picked his name to avoid the disastrous consequences of an innocent mistake, the rest of this book will tell you everything you need to know. It will even explain why that other company couldn’t simply be “nice” and let Stephen’s business coexist alongside them (answer: customers could start getting confused, and they could have a hard time enforcing their own rights anymore).
How Stephen Could Have Avoided Disaster
The most important legal question when picking the brand name of a business (or product, or service), is:
DOES SOMEONE ELSE OWN THE RIGHT TO THIS NAME ALREADY?
This is a way of asking whether your proposed new trademark infringes someone else’s trademark. This book will explain exactly what a trademark is (trademarks are business and product identifiers, while patents protect technology, and copyrights protect art works, writing and such). It will also explain what constitutes trademark infringement, and what doesn’t (when in doubt, it’s probably infringement).
So if Stephen could go back in time and prevent his disaster, the first thing he should have done is some Google Searching. If he’d searched for “Academy Arms” (his first choice), Google would probably have told him all about my client, Academy Tactical. Disaster avoided.
Google helps, but it isn’t good enough. You might be smart enough not to store oily rags in your garage, but that doesn’t mean that you shouldn’t have a fire extinguisher handy, and fire insurance too. That’s because there are many trademark infringements that Google won’t help with. Trademark infringement can easily occur when the words are similar, but not exactly the same. If they sound similar or look similar, but aren’t spelled the same, Google might miss them, and you’d face the consequences of infringement. This is why EVERY new business including firearms dealers should get a proper trademark search before launching a new brand.
A trademark search is fast and inexpensive, and is probably the ultimate no-brainer of an investment in legal fees for a new business. You can try to find a trademark searcher on the internet, but there’s a good reason to get a real trademark lawyer, to help you ensure that you can protect for yourself (against future infringers) what may become the most valuable asset of your business: your own brand.
Why it’s Essential to Secure Your Trademark Rights
Imagine that you’re like my client, an established firearms business, and some upstart comes along with a confusingly similar brand name. You’d want to be able stop them to protect your own rights, of course. But even if you aren’t infringing the rights of others, it’s very possible that you don’t own any rights in your own brand.
You might not own your own trademark if you picked a trademark that is too descriptive (like “Accurate Guns”). That’s because trademark rights don’t go so far as to let you to stop anyone else from describing their guns as accurate.
You might not own your trademark if you’ve only used it locally, and someone else is using it in other regions (even later than you, they can still win the rights there ahead of you).
You might not own your trademark if you never used it properly as a trademark (you never used the right kind of label, sign, or other proper documentation).
And if you don’t own your trademark, that means someone else can come along later with the same brand, and win the right, once again being able to shut you down, and forcing you to start all over again with a new brand name.
How to Secure Your Trademark Rights
The solution goes back to the founding of our nation: A trademark registration with the U.S. Patent and Trademark Office is by far the best way to secure your own trademark rights. This book goes into great detail about the reasons for investing in the benefits of a registered trademark. Briefly, it means that your attorney and the trademark examiner have verified that you are legitimately using your trademark, that there are no conflicts, and that you deserve nationwide rights the moment your application is filed.
Another important benefit of registering your trademark is to get listed in the trademark database that everyone else searches. When I conduct a trademark search for your new brand, that’s what I examine to look for any conflicts. When your trademark is in the database, it means that other businesses are finding your trademark, so they can avoid getting into conflict with you (which saves you legal fees, too). Best of all, trademark examiners can use your registration to reject other applications that might conflict with your rights, all at no cost to you!
How to Proceed
Some people who have little to invest in a new business can do much of this themselves, if they can stomach the risk of a serious error blowing up the business later on.
Otherwise, you must hire a lawyer to do the work (95% of lawyers give the rest of us a bad name!) Any lawyer can file a trademark application, but a specialist is always advisable.
Because I represent more firearms companies that any other patent and trademark lawyer (or even law firm) in the nation (or world), I believe I have a serious responsibility to the industry. I’m proud of how I can help to prevent good firearms industry companies from wasting their valuable resources on legal disputes by helping to avoid those disputes altogether (or at least to build strong assets so disputes are resolved favorably, quickly, and cheaply).
Part of my responsibility to the firearms industry and to my many clients is to personally review every firearms-related trademark filing every month (I don’t know if any other lawyer can honestly claim that). This way, I spot potential conflicts (the poor fools who filed it themselves without a proper search) and we can nip them in the bud before the new trademark is entrenched. And while I rely on searches to be sure, I have developed a pretty good intuition about brands in the industry and have helped companies come up with some powerful (and protectable) brand names.
Finally, while my website GunPatent.com shows my impressive list of major firearms industry clients, I also enjoy assisting start-up businesses, and would be happy to assist any reader of this book. Contact me through the web page, and we can start the simple process to get you some initial (free) advice, to secure your valuable rights, and to avoid needless legal fees and potential business disaster.
Trademark Essentials
A trademark search helps make sure you don’t pick a brand that lands you in legal hot water. Even a Google search can help avoid some disasters. Registering your trademark means you can protect your brand, and helps you to avoid legal fees that are caused by avoidable conflicts. Investing in a specialist who understands your industry can save you money and headaches in the long run.
More Legal Secrets for Gun Dealers
Picking a good brand name can mean success.
You now know the dangers of picking a bad brand name that can land you in legal hot water. But that still doesn’t tell you how to pick one that will help you succeed.
Normally, I’d point you to the chapters on picking good brand names, and they could be helpful. They advise to pick brands that suggest the features and benefits of the product or service that make it superior to the competition. That’s a challenging order for another new gun dealer. I also suggest you resist the urge to come up with a “cute” or “too- clever” brand (you don’t want to sound like the “Curl Up and Dye” hair salon).
For a new gun dealer entering what’s undoubtedly a crowded marketplace, and simply hoping to get a decent share of the business initially through friends and referrals, my advice is just a little different from my usual branding advice.
Don’t be afraid to be boring. By boring I mean don’t be afraid to pick a business brand name like “Jefferson County Armory” or “Akron Arms” or “Westside Guns.” Of course, we don’t want to pick one that would be confusingly similar to an existing shop in your area (or any nation-wide business). But picking a boring name that makes you sound like the dominant player can be a good idea if you’re a new guy.
A solid but boring brand can be especially powerful if you are using internet and social media marketing. First and foremost, that means getting a good domain name. If you can find a domain that really works to present you as an established business in your area (JeffersonCounty Armory.com, AkronArms.com, WestsideGuns.com) then that might be all you need to pick your business name and brand. If you’re stuck on being “Atlas Guns” but can’t get that domain name, you’ll be fine as Atlas Guns with an “AtlasGunsMiami.com” domain name.
Avoid compromising with anything other than “.com” (that’s the beachfront property on the Internet), and avoid hyphens, and anything that is confusing to say, or hear, or that has to be spelled out to a listener. If your smartphone voice recognition system (“Siri”) doesn’t recognize your name, then your customers will have a hard time finding you. Don’t be afraid to pursue a domain name that’s “taken” as long as it’s not in actual use. Anything under $1000 for a good domain you want to use is cheap (but don’t pay big bucks until your trademark attorney has said it’s safe to use – domains can sometimes infringe other trademarks). I see my clients sometimes paying thousands for domains that are combinations of two words that no one has ever used, but are good as a brand for a new product.
Also, check to see if your planned brand is available as a username on Twitter and Facebook, if you think you might market that way. And don’t forget to grab a bunch of related domains that have all the variations and errors customers might make, and that competitors might try to exploit (AkronArms.com, Akron-Arms.com, AkronArms.net).
The Trademark Protection Challenge
If you picked Akron Arms as your trademark (and the trademark search assured us that it didn’t infringe anyone else’s rights) then you’d still probably want to try to register it, to help others from stumbling onto your legal turf. But realistically, the trademark examiner would probably reject it for being merely descriptive of an arms retailer in Akron. We’d reply by changing the application to the “Supplemental Register” which is a 5-year temporary holding tank for trademarks that aren’t quite ready for prime time. You’ll benefit from a brand that is great for internet marketing and after 5 years, we can show that your business is now recognized as “Akron Arms” and not just as an arms seller in Akron, but because of all the good will and reputation you’ve built up. At that point, we’d be able to prevent someone from opening Akron Armory, because it would likely confuse customers into thinking it was associated with you.
If this leaves some questions in your mind, the rest of the book should clear things up. And the reality is that most businesses use this type of information as a starting point, and then consult an expert as they’re making important decisions. If all you get from the entire book (visit Gunpatent.com for your FREE copy) is that picking your brand comes with risks and opportunities, and it’s wise to consult an expert, then you’re way ahead of the game.
