Law Office of Kristen A. Perry
1 Leigh Street, P.O. Box 5215 Clinton NJ 08809

Brief Thoughts

Legal Lessons from the Real World

The following cases provide real-world information and insights for:

  • Business owners or potential business owners.

Too often when investing time and money into a business, all of the focus is directed in one or two areas (eg, location, distribution) and not on how the business will be known and found—its identity. 

  • Individuals, couples, partners, or families.

There are many issues to consider when discussing such personal decisions as trusts, wills and general estate planning, and medical directives. These considerations are best discussed well before the documents to be drafted are needed

  • For those wishing to keep up with the latest legal developments in intellectual property law
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Trademark for your Business Name? Before You Start or Change, Consider This

Mutt’s Finds Itself in the Doghouse

Let’s say you were hankering for your favorite indulgence—a hot dog like no other, one served in Clifton at the famous Rutt’s.  But when you arrive, unfortunately, it is closed. Undeterred, you dig out your phone and hunt for hot dogs nearby, and you find that another place, Mutt’s, is a mere five minutes away.  Given the similar names, would you think that it was related in some way to Rutt’s, and that you could find the same specialties down the road?  How likely would it be that you would confuse one for the other?  Pretend you aren’t as familiar with Rutt’s as described above, but that you heard about this great hot dog palace in Clifton and came upon Mutt’s—would you mistake that for Rutt’s and look no further?

The owners of Rutt’s think so and several months ago unleashed a federal lawsuit upon Mutt’s, claiming that the similarity between the two names will confuse customers, thereby drawing business away and tarnishing the Rutt’s image.  They claim that Mutt’s has infringed upon their trademark, Rutt’s. Mutt’s denies any wrongdoing, and as reported in the New York Times, explains that Mutt’s is a play on the dog of “hot dog” and besides, how could a person reasonably confuse the letter “R” with the letter “M”?

If the parties don’t settle this dispute, that question, and others, may be decided by the court.

Stay tuned for developments in this tale (aka Stay!). While settlements are often subject to confidentiality provisions, a change in Mutt’s name (think Famous Ray’s Pizza v. Ray’s v. Original Ray’s) could be interpreted as a mutually agreed upon solution to the controversy.

As a trademark attorney, I have heard similar stories before, often with businesses just starting out. The entrepreneurs may be unaware that their business name should be vetted before being adopted—to try to avoid what is happening in New Jersey now.  Even if Mutt’s prevails, the cost of the victory promises to be considerable. 

Before you order the labels, the letterhead, the announcements, the awning, the business cards and boxes, you should consult with an attorney who has significant experience in the field.  Searching the New Jersey database when choosing a name for your entity does not, in any respect, mean that name is not infringing upon a trademark owner’s rights. You cannot rely on that result in this regard.

Best practices dictate that before the name is adopted you may want to proceed with caution and have the name, the logo, slogans or other indicia of ownership examined by an attorney familiar with the ins and outs of trademark law.  Not quite sure whether something could be considered a trademark? Think of the name “Nike”, the slogan “Just Do It” and the logo of the Nike “Swoosh”.  Whether combined or used independently, those marks are protected by trademark (and other) law. 

If Mutt’s is forced to change its name, the costs will not be limited to those associated with the dispute and merely changing a sign. It could affect the business name’s registration, any internet presence, all advertising, anything whatsoever that bears the Mutt’s name. 

Most start-ups are financially strapped and many consider this an optional expense or a luxury, not a necessity.  This story should, at the very least, lead to a consultation to explore your options.

When you decide to do so, please give me a call to set up an appointment.  We will be able to discuss your proposed marks and explore the avenues you can take to not only protect your mark from others, but from finding yourself in the same rut…as Mutt’s.

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Look Before You Leap
Clients often do not realize the value in logos, written materials, slogans, and other assets that  may be suitable for trademark and/or copyright protection. An initial meeting can provide insight and strategy regarding ways to protect this property, which often becomes a company’s most valuable asset (think of the Nike “swoosh” or “Just Do It” logo). Companies that fail to protect intellectual property stand to lose the right to exclusively use a word that would otherwise direct consumers to the specific company. “Aspirin” was one a term subject to trademark protection, which was lost due to failure to protect and enforce the mark.
Audience members at speaking engagements have shared many stories about launching a site, a store, a cafe only to be on the business end of a "cease and desist" letter demanding removal of the new name from the awning, the window, the website, the tags on clothing, the letterhead and so forth.
At this point, the new business owner is typically invested mentally and financially in the identity of the business. However, in order to avoid defending a trademark infringement lawsuit they have complied with the demands and had to start over.
Your new business demands the best of your time and energy and economic resources are usually in short supply. Marketing materials represent a significant and ongoing expense as well as the character of your business.
You can reduce the likelihood of running afoul of another's trademark by seeking advice and counsel before you have retained the graphic artist to work up the design.
And if you are hiring a graphic artist you need to ensure you own the end product. In an upcoming post, I will discuss Works Made for Hire.
Nothing in this section can be deemed legal advice. It is provided for informational purposes only.  Each instance has unique circumstances that must be considered by a qualified professional.  
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1 Leigh Street, P.O. Box 5215 Clinton NJ 08809
Phone: (908) 735-6100
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