#101 Cease and Desist: Before You Infringe on Someone Else's Trademark
This time of year can be really exciting for business owners. It’s a time for new ideas, a renewed sense of drive, and a reinvigoration of energy. We see businesses launching new offerings and services, new memberships presented and courses launched. You name it, we’re seeing it.
In today’s episode, I want to talk to you about the issue of infringing trademarks and how it can be avoided by putting the right processes in place. While I have touched on trademarking previously, there is just so much to unpack on this topic that I want to dig further into what it means and how you can protect yourself as a business owner.
As I see more and more people seeking advice on cease and desist letters and instances of trademark infringement, I want you to think about the procedures you have in place for these scenarios.
Without thorough preparation, there is a real risk that you might infringe on somebody else’s trade and be asked to stop trading yourself. Losing the precious time, money and effort you’ve put into your new idea could be devastating and costly.
Today I share the different steps you can take to make sure you are doing the research and due diligence that will give you peace of mind when moving your business forward.
Putting a meaningful and unique name to your new venture is an exciting process, and I hope this episode will guide you in going about this in the best way possible.
Full Transcript:
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Tracey: [00:00:00] Hello everyone and welcome back to the Rise Up in Business Podcast. Thank you again for joining me for another episode of the podcast. I'm so grateful that you choose to have me in your ears.
I know there are so many podcasts that you can choose from, particularly in the context of all things business. So I'm delighted and privileged that you're choosing to listen to me. This time of year can be really exciting for business owners. There's new ideas. There's passion and reinvigoration of energy, and there's drive, and what we are seeing is businesses launching new offerings, new services.
There's new packages being offered. We're seeing courses launch. Podcasts launched, memberships, you name it we're seeing it at this time of year. People are launching everywhere. I dunno about you, but I can sense it with my clients and I sense it that there's this real new and fresh energy in the air.
And I love that. I love seeing business owners with a reinvigoration at this time of year, and I love seeing business owners with new ideas and new concepts that they're wanting to share with the world. What I wanna talk about in this week's episode is the concept or the issue of infringing trademarks.
So when we are looking at launching all of these new things, , we think about what we're gonna call it, our messaging and our name. What are we calling our podcast? Or what are we calling that new course that you're offering? But more importantly, what I want to get you to think about today is what is the process you go through when you're coming up with those names, when you're coming up with those [00:02:00] taglines to attach to the new thing that you are introducing to the world.
What is your process? And the reason I wanna shine a light on this and dive deep into this in today's episode of the podcast is because what I'm seeing more of are people coming to me to get advice on correspondences or demands that they're receiving, which are called a cease and desist letter. So cease and desist.
You're infringing on my trademark. It's happening. It's happening more and more because what I'm seeing is people are jumping in boots and all with their new offerings and naming their new offerings, and they're not necessarily pausing and taking stock and doing the due diligence that's necessary to make sure that you're not infringing on somebody's trademark.
So when you are thinking of launching something new and you are coming up with a name, what is the process you go through? So you have a marketing team, or you get your branding experts on board, or potentially you're seeking input from your copywriter or whatever that might look like.
But as the business owner, what are you doing to make sure that it's okay to use that name or to use that phrase, if you don't have a process in place and you don't have all the I's dotted and all the T's crossed, you're leaving yourself exposed as a business owner. Because what could happen is you invest time and money and energy into launching something new, only to get a little way down the track and to receive that cease and desist letter where you are told,
"Stop! You're infringing my trademark. You can't use it, it's mine". And then you're exposed potentially, and you've invested time and money and energy, and you either need to pull it from the market and start again, or you need to go into battle if you like, and defend any allegation that you've infringed that trademark.
So what do you do? So when I work with clients and they seek my advice on this, I always explain the process of finding out what's going on in the market. Have your finger on the pulse and find out what's actually going on in the industry and whether or not there's anything happening with that name or phrase that you [00:04:00] want to use.
You can do that by Google. You can do it by business name search. So have a look at previously registered business names, or already registered business names, and have a look at the URLs and see who has registered URLs, and then go and check out those URLs and see what they're doing there. Sometimes they're placeholders, sometimes they're not.
Sometimes they're more than that, but have a look. But a step that people seem to miss is searching the IP Australia website for registered trademarks or trademarks that are in the pipeline. That's key. In order to have exclusive rights or exclusive use to a name or a phrase, you have to have a registered trademark.
So if someone's gonna write to you and say stop, cease, and desist using that name or that phrase, it's mine, you can't use it. They have to have a registered trademark. So do they? Check. You can check on the IP Australia website, or you can reach out to us or your business lawyer to do the searches for you and find out what has been registered, and what's in the pipeline.
Once you know that, and you've got a really good handle and a good feel on what's happening with that name or phrase that you want to use, you can make a decision as to whether or not you want to use it.
Only then can you make an informed decision as to the best way forward for your business. Do you wanna use that name or that phrase? That'll depend on what you find. Are you at risk of upsetting somebody? Are you at risk of somebody writing to you and making a demand that you cease and desist stop using the name.
So I'll give you an example of what happens or what can go wrong when you don't do thorough due diligence or when your due diligence doesn't turn up registered dealings with names and phrases. So you might be in the throes of launching a new podcast and you have. done what you think is thorough research.
You've launched it into the world. You've launched the first [00:06:00] three episodes and all of a sudden out of the blue, you get completely blindsided by a letter from a lawyer or a DM in your Instagram dms from someone saying, "Hey, that's my name. You can't use it. Stop it". This is what we wanna avoid. But if, if it happens, the first thing you need to do is be able to fall back on your research and go, "Well, actually
you don't own that. You don't have a registered trademark. You can't make me stop. I don't have to stop just because you want me to". And this is an area that people either don't understand or they overlook when they're launching something because you can receive a letter like that from someone. But the first thing you need to do is understand whether or not they've actually got grounds to ask you to stop using it.
Sometimes they do, sometimes they don't. Sometimes it's a try on. That happens. Sometimes they don't know that they don't have proper grounds. They think they do. But the key here is to make sure that you know the position and to make sure that you are confident in your choice of name or phrase so that you are confident going forward when you use that name or phrase because you know that it's all clear and you know that you can.
So if you receive a letter like that and you've done your thorough due diligence and you've got the right team behind you, you can really easily respond to a letter like that, or ignore it, either one. But if you are satisfied that that person in fact doesn't have a registered trademark, that you're not infringing anybody else's trademark, then you can continue to go forth and share your new offering with the world.
If though you've missed something and if it comes to your attention that you are infringing someone's trademark, not only do you have to stop, you don't have any recourse to recover the costs that you've already incurred in your branding and launching that product into the world. You need to then spend again because you need to rebrand and relaunch.
So if you are building up credibility with your offering. [00:08:00] If you're building up brand exposure and building up your reputation, if something happens and all of a sudden you realize you're not entitled to use that name or that phrase. You need to stop and you need to essentially start again. That's time lost.
That's money lost. Potentially it could be damaging to the brand or reputation depending on the industry of your business and how much time and effort you've put into it. But the essence of what I'm saying is you wanna avoid that. Now, if you've been listening to this podcast for a while, you'll know that I stand for prevention being better than cure, and there is no substitute for preparation.
Take the time to do the due diligence. Take the time to get the advice that you need so that you can make an informed decision in your business before you launch your new course or podcast or offering or whatever it is, so that you know with confidence that the name or phrase that you've settled on, puts you in the clear so that you know you're entitled to use it.
Then you've got peace of mind going forward, and that's what we're all about.
What I would like to put emphasis on here is just because someone writes to you and says to you, "That's mine, you can't use it," it doesn't automatically make them right. You need to then know what your process is from there. If you've taken the time to do your research and your due diligence, you'll already know the places to go to look to verify what they're claiming.
If you haven't done your research properly, if you haven't done your due diligence properly, you're probably gonna panic. We wanna avoid that. But if it does happen and you are in a bit of a panic, you can always reach out to us because we can step in really quickly and help you because we know where to look.
We know how to test their allegations, and we know how to verify whether or not what they're saying is right and whether or not you actually do have to stop using that name or phrase. We wanna set you up so that you are confident and you have crystal clear clarity over your rights and your entitlement to use that name or phrase.
And you guessed it. You know where I'm going [00:10:00] next. If you are using a name or phrase, and if it's unique and if it's important to your business that you have exclusive rights to that name or phrase, then we want you to consider making an application for a trademark for your business over that name or phrase.
As you've gathered probably already from this episode and from previous episodes that we've done, and we've touched on this issue previously, there's a lot to the issue of trademarking. You can't trademark something just because you want to or just because it's a nice to have. You have to make sure that what you wanna trademark is descriptive and unique to you, and that it is capable
of being trademarked. Oh gosh. There's so much to unpack on this topic. I get asked this a lot, and because of that, I've actually recorded a masterclass, which you can access directly from the website. It's a masterclass where I have recorded the advice that I give to my clients explaining all it is you need to know about trademarks. What it is, how to do it, whether you can, what the process is, the pros, the cons, all the rest.
It's all there pre-recorded in a masterclass really easily accessible for you on the website. And as I say, the reason I did it is because it comes up so often and I wanted to make this type of information really easily accessible to business owners just like you. So I hope you found this episode helpful.
I hope it's given you some guidance to help you navigate that tricky and sometimes confronting path when you do receive that cease and desist letter from somebody. But I'd like to put you in a position of power by knowing what it is you need to do before you launch that new offering with that new name into the world in the first place.
If you have enjoyed this episode, if you have found it to be of value, I would love it and be so grateful if you would take a moment to leave a review on Apple Podcast. That way we can help get the podcast into the ears of even more listeners, and that is what we're all about. Thanks so [00:12:00] much for listening.
I'll catch you next time.
LINKS:
Get your copy of my Annual Legal Checklist here
Join The Legally Empowered Entrepreneur Masterclass Series here
Website: tmsolicitor.com.au
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Book a Strategy Session with me here
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