Dealing with trademarks when a center has the same name – DSP 108

Okay. So… this happens. Sometimes float centers open up with the same name. It can be challenging, especially given that there are only so many float puns you can make. Graham and Ashkahn discuss the merits of protecting your name and some of the limitations that come with it, which is impacted by how close another center is, whether or not you have a copyright, and just how much effort you’re willing to put forward to ensure that it stays yours.

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Transcription of this episode… (in case you prefer reading)

Graham: Today’s question is, “what do you do if someone opens a float center with the same name as yours?”

Ashkahn: Well, I guess it depends on where they are.

Graham: Yeah. I mean certainly for legal recourse. It has a lot to do with it.

Ashkahn: Or for how much I would say it matters or you should care about it. If someone’s on a different continent than you…

Graham: … And you don’t tend to expand to that continent in the future.

Ashkahn: … And you don’t intent to expand to that continent in the future.

Graham: Let’s back up a little bit.

Ashkahn: All right.

Graham: There’s the legal routes you can go and then there’s just the non-legal routes that you can go. The legal routes are going to be a lot easier if you have a copyright on your name or trademark.

Ashkahn: This is assuming that you want to do anything.

Graham: This is assuming you want to anything. Yup.

Ashkahn: What I’m saying, someone opened Float On in Hong Kong, Float On Hong Kong.

Graham: I wrote them a letter asking them to change their name. I wrote the same in Australia. There’s a Float On Australia. I wrote them a letter asking them to change their name in Australia. They don’t have to listen to me.

Ashkahn: They don’t have to listen to you, but I feel like there’s a certain amount where you could not care about stuff like that. I mean if someone’s in a completely different country that speaks a different language, halfway across the world, and you’re running your brick and mortar business in your city, I really don’t think it’s probably a big deal or will ever lead to any issues for you or will ever even be known by almost anybody other than you. It might be at the point that you don’t care and don’t need to do anything about it.

Graham: You should still send them a letter. It’s my opinion. I think you should always try to defend your name a little bit even if they have no reason to listen to you, even it’s unlikely to affect you in the long run.

Ashkahn: I guess you can at least make them aware that you exist.

Graham: Yeah. Make them aware that you exist with a letter from you lawyer. No, I didn’t send a letter from a lawyer.

Ashkahn: I don’t think it’s a big deal in those circumstances.

Graham: All right. Let’s ignore international. Let’s say that someone’s open on the other side of the country.

Ashkahn: Okay.

Graham: You’re on the west coast and they’re on the east coast. What are you thinking? Now I’m asking. Yeah.

Ashkahn: How do I feel about that now?

Graham: Yeah. Now how do you feel?

Ashkahn: That’s at the point that I’d be like, yeah, I’d go down the route of trying to have a conversation or seeing if someone would be willing to change their name or just recognize that maybe it’s not the greatest idea to have multiple float centers out there with the same name. It’s still the type of scenario that if someone were to go forward with it, and again, your plan is to run your float center in your area and you’re not trying to open some giant franchise or something like that. At the end of the day, I still don’t think that’s going to impact your business really. Maybe when someone searches something on the internet, but at this point, most browsers are going to show you things based on your location first and so, I would prefer if it didn’t happen but, again, don’t think it’s of humongous consequence to your business.

Graham: I think we have vastly different opinions on this actually. I mean, again, foreign country was interesting too, the difference between someone opening on the east coast of the United States in Maine and then someone just over the edge of the border in Canada. It’s like a very distinct legal difference even though geographically there’s not a huge difference there.

Ashkahn: Right.

Graham: Either way, I would still prefer that they don’t run with the name Float On, for example.

Ashkahn: Sure, in preference, yeah. I would prefer nobody else had the name Float On but there are various levels that I care about it.

Graham: Yeah. I mean to the point where we took out a trademark on it. That’s the protection that you can do. If you don’t want anyone else in your country or in other countries opening up with your name, you can get a trademark in your country and you can actually get trademarks specifically in other countries as well so that you can kind of control that. One of the deals with getting a trademark is also that, if you go that route and your intention is to enforce the trademark and defend your name or your logo or whatever, you’re also required to enforce it.

If you have that trademark and then you start just letting other people use your name or you don’t go after them, then your trademark kind of becomes invalid. You can’t pick and choose and say, well, some people are allowed to use something that looks like our name or sounds like our name, looks like our logo and I’m not going to go after them. Then these other people do the same thing and you go after them, in a court of law, might not hold up as well. Again, we’re not lawyers, so keep in mind this is all secondhand information too. We’re just kind of flying by the seat of our pants in national trademark registration.

That’s nationally. If you are in the U.S. and Canada, I think a trademark for U.S. and Canada is a good idea, getting a trademark in the U.S. and getting it in Canada as well. At that point, yeah, you can send a letter. From my perspective, if someone opens on the east coast, I’m not going to send them a letter from my lawyer or something like that and immediately come down and be like, “Hey, you’re not legally allowed to open with this name.”

Ashkahn: Right. I mean in general, that’s usually I don’t think the right way to start almost anything, right?

Graham: Yeah, like skip straight to just pulling out the baseball bat and going for their knees or something. That’s not how you want to have a conversation. I think it’s like everything. You want to be a human being and just talk to them. I often like starting out saying, “Hey, I’m not sure if you even knew about us or if you knew that we existed or there was another center with this name out there. We do exist and we’d appreciate it if you picked another name.” It’s not a bad letter to send out.

Ashkahn: Yeah.

Graham: Stating the number of years you’ve been around is often a good idea too or how many clients you’ve served just kind of puts it in perspective for them. At that point, they can decide to listen to you or they can decide to not listen to you. If they don’t listen, I like to trying to get a phone call. It starts with an email or a letter. I’ll say that most of the time they’ve been received well. I think this has happened within the country two or three times that people have tried to open up with Float On as the name. It’s happened overseas twice. There’s the one in Australia and the one in Hong Kong. I guess five times that we personally had to deal with this one.

Yeah. Most of the time a letter works. A phone call, I think, is great or an in person meeting if they happen to be somewhere in the vicinity to you that doesn’t require too much travel is also good. Oftentimes, that’s also enough. If you get on the phone, you just explain your side of things. You’re like, “Hey, I know you wanted to start up. It’s a really tight knit community, it’s very small. It’s not there are 50 float centers in a city like there are hundreds of restaurants in cities that people can go to and you happen to be on the other side of the country and using the same restaurant name. It’s just such a smaller community. Can you understand that this could get confusing or if one of us wanted to expand it could cause problems and maybe choose something else?” I think that’s also usually received well.

Ashkahn: Yeah. It seems like it, especially if people are closer within the same country.

Graham: Yup. Then there’s the they still don’t want to change it after that. Then that really does come down to, do you have a trademark or do you not have a trademark on your name and your logo? In fact, even if you were open first and they’re the ones who registered a trademark on that, that can be bad news bears for you as a business. You might actually even need to end up changing your name and logo depending on how much they’re going after you or what kind of route they want to take. Fortunately, again, we ended up with a national trademark so I think it’s only come down to that level of conversation once where it seemed like they were like, “Hey, I appreciate that, but we’re going to go with Float On anyway.” At that point, I just very nicely said, “Okay. Well, just so you know, we do have a national trademark on this and you actually can’t do that.”

I think they were actually a little confused about the process of looking up those trademarks and thought that they had been doing due diligence and thought that they were actually the first legal Float On opening up, which obviously wasn’t the case in this one. Even then, being nice and not assuming that they intended the worst or that they’re out to get you or anything like that. Even in my letter where it’s saying, “Hey, here’s the legal document that we have protecting this,” was framed as understandably as possible. I think I even used to word, like, “I know all this stuff gets incredibly confusing and I’m sure that you’re a little lost in the weeds here…” Yeah. It’s nice.

You wouldn’t even try to enforce it on the east coast, getting back to …

Ashkahn: That’s not what I’m saying. I’m saying I think we have a difference in how much we think this would, at the end of the day, actually affect us. I don’t think there’s any scenario where I wouldn’t send an email or something like that but if someone across the world or something that like, I just really don’t think it’s going to actually matter in the long run. The closer it gets to you, the more I think it does matter. Within the same country on the opposite side of the coast is that middle ground where it’s like, yeah, I’d try and if it didn’t end up working out. I mean in this case we have a trademark so there is no it’s not going to work out.

Graham: Right. Yeah.

Ashkahn: In the case that you don’t or something and this is just getting crazy, I would step back for a moment and be like, “Okay, is this really going to be a huge deal for my business or not? Are people actually going to get as confused? Am I going to lose business? Is someone going to try to float at my float center? Pull up a website for someone in Florida and fly across the country to float there?” I don’t think so. It’s not preferable and I’d put work into trying to avoid it but I do think it’s not like … I mean to me, it’s mostly almost like future proofing sort of stuff.

Graham: Yeah. That’s what I was going to say.

Ashkahn: You don’t want to get to the point that that other place all of a sudden now is a huge national franchise and opening five centers all around you. That’s kind of worst case scenario, which is not necessarily, I think, the most likely or statistically probable thing from happening, but that’s why I think mostly we’re trying to protect ourselves from it.

Graham: Yeah. There’s even things just with conversations with float centers. You will, you’ll see totally different float centers with different owners who are running their centers in different places in the same country, like in the U.S., and they’re fine with it. Sometimes those centers have actually called and checked in with each other. A new center opens up with the name that you have or let’s say you’re a new center that’s opening up and you’re looking around and someone has that perfect float name that you wanted, reach out to them. See if they care. Don’t just start with that name and wait for them to find out and then reach out to you and ask you to stop.

Ashkahn: Yeah, yeah. For sure.

Graham: I mean we’ve barely stopped people who were ordering brochures and were about to order their giant signs and stuff like that and we have to come in and be like, “You can’t use that name.” The end result is, “I’m glad you told me early.” It’s like, “Yeah. You should’ve told us.”

Ashkahn: If they know, yeah.

Graham: If they know. If they know. If you are one of those centers, again, starting up and you do find someone who has the same name as you, give them a ring. Even if you look up national trademarks and you find out they don’t have one, it’s still just a courteous thing to reach out and make contact.

Ashkahn: Yeah. Definitely.

Graham: I didn’t mean to bulldoze you on that one.

Ashkahn: No. Other than I think our values of how much of a terrible situation this is, I mean the advice is all the same.

Graham: Yeah.

,

Ashkahn: Call people. It’s not that expensive or that difficult to get a trademark. It’s not like this is a huge, crazy decision you have to make financially or in terms of the work you have to do. It costs some money, but it’s affordable and you can go through so there’s not any great reason to avoid it or not have one if you do want to protect yourself.

Graham: Yeah. Yup. Yup. All right. A divisive episode.

Ashkahn: Divisive.

Graham: If you have any other questions for us, go to floattanksolutions.com/podcast

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