You have developed a funny, witty, informative blog. Your followers are up, you are killing it on Instagram, Twitter and Facebook and you think, “I could actually make some money from this”. So you decide to protect your brand and trademark the name of your blog. You are already spending the money from your popular blog in your mind when your trademark application is successfully opposed. Think this couldn’t happen to you?
In 2012, Bunmi Laditan, a mother of three in Montreal, created a satiric (and in my humble opinion, ridiculously hilarious) blog and Twitter handle called the Honest Toddler. The blog was ostensibly written by a three-year-old who wanted to share his…unique….views on what makes good parenting. Bunmi’s blog and tweets became wildly popular due to the aforesaid hilarity and she began receiving offers for books and television shows based on the Honest Toddler.
Sensibly, Bunmi decided in September 2012 to file a trademark application for the Honest Toddler name. Slight problem. The Honest Company, co-founded by Jessica Alba, had purchased the domain name honesttoddler.com in March of 2012.
What ensued was a very public fight between Bunmi and The Honest Company when it opposed Bunmi’s trademark application. Bunmi cast the story as a David v. Goliath battle and appealed to her large following of parents of young children, who happened to be the target market for the Honest Company. Probably wishing to avoid a public relations nightmare, The Honest Company and Bunmi settled before litigation commenced and she still uses the Honest Toddler name. Had this gone to court though, Bunmi likely would have lost not only the name, but tons of money in lawyers’ fees and costs because she was, in fact, an unauthorised user of a trademarked name. She also would have lost her lucrative brand.
What do you we learn from this story?
- Research, research, research
Before you choose a name for your blog, your Instagram account or Twitter handle, Google that name and variants of it to see whether it is currently being used by another person or company. Check whether the domain name has been purchased but is not being used. Do market research to determine whether the name is likely to be well received by your target audience and market.
- Register your trademark
A trademark is a word, combination or letters or numerals, sounds or designs that distinguishes your goods or services from those of others in the marketplace. Once you’ve settled on your name and have established that no one else is using something identical or similar, apply to register your trademark as soon as you can. In Canada, an application to register a trademark can take anywhere from 10 to 18 months to process. That’s why it’s so important to do thorough research before application; this is not something you want to have to do over.
- Protect your asset
Once your name is trademarked, watch its use on and off the internet like a hawk. You should periodically Google your name to see whether it is being used by someone else without your permission. If you discover an unauthorised use, you may send a stern letter requesting that user to cease and desist. The unauthorised user who ignores your request may be liable to damages in the form of delivery of profits derived from using your trademark without permission or in the form of compensation for irreparable damage to your brand.
You should also develop a policy to govern authorised use of your trademark, such as when you are featured in the advertising of an event at which you will present. A legal professional can help advise you and draft the terms and conditions appropriate for your business.