NannyPay or NaniPay – What’s the Difference and Why Should We Care?

A recent article in the legal press described a trademark battle between two small businesses:

“A brand battle has broken out between the NannyPay maker and NaniPay maker, two companies offering solutions to the problem of how to pay a babysitter and comply with the law. Company 1, the NaniPay user, sent a ceasefire and – Withdrawal letter to Company 2, the NannyPay user, saying that he must stop using the term NannyPay for his software or face a lawsuit from Company 1. But instead of stopping using it, Company 2 decided to win the race to court. continues to seek declaratory judgment that its NannyPay trademark does not infringe Company 1’s NaniPay trademark. ” Cyberlaw Archives.

Company 1 thought it could intimidate the small software company into giving up its trademark, but Company 2’s quick response paid off; and the case was settled in favor of the software company. The legal battle was inevitable. Both Company 2 and Company 1 understood that the similarity between the two trademarks could confuse their customers, which would ultimately affect the profitability of each company. They both took steps to protect these valuable assets. Company 2 registered its trademark with the United States Patent and Trademark Office (“USPTO”) long before the lawsuit; and although Company 1 had forgotten to do so (a costly mistake), it hired a law firm to demand that Company 2 cease and desist from using the “NannyPay” trademark.

Clearly, trademarks and service marks are worth protecting and can be among your company’s most valuable assets. How do you identify a trade or service mark? Easy: They are the names, images or phrases that identify your product or service and make customers think of you when they hear or see the brand. When you think of a trademark, you may immediately think of “Coca-Cola®,” “Kodak®,” or “Windows®,” but your brand doesn’t have to be famous to be valuable. Think about the consequences of someone stealing your business or service mark and marketing it as their own, ouch! As I have tried to convey, the demands are made with that material. Also, imagine the consequences of using a trademark or service mark owned by someone else, even more material for lawsuits. If you have a trade or service mark, determine if someone else is using it. If not, register it with the USPTO. Registration is important because it serves as proof that you were the first to own your trademark and provides legal damages should you file a lawsuit for infringement. Remember, though, that if you go to the trouble and expense of registering your trademark, you need to control it. Search the internet regularly and check your trade magazines, newspapers and other publications and make sure no one is breaking it. Also, don’t save your trademark for a rainy day. A trademark must be used in commerce and failure to use it can be considered abandonment.

Here are ten reasons why you want to register your trademark. They have been widely published but are worth repeating:

1. BRAND SEARCH. Before registering your trademark, your attorney will ensure that a thorough trademark search is conducted to determine if someone else may be using the same or a similar trademark.

2. PRINTING COSTS. If you don’t sign up and later discover that another company already has the same or a very similar name, you will have to redo all your business cards, stationery, advertising, and signs.

3. LOST CUSTOMERS. If you have to change your business name because you later discover that someone else is already using it, you could confuse and lose your customers.

4. EXCLUSIVE USE. Registering your trademark gives you the exclusive right to use it within the relevant geographic area. 5. OPTION TO EXPAND. You could lose the right to expand outside of the original business area if you do not register your trademark.

6. PRESUMPTION OF OWNERSHIP. Any other person using your trademark will be presumed to be an intentional infringer and you may be entitled to monetary compensation as a result of the infringement.

7. PROTECTION OF STATE LAW. The laws of some states provide additional protection in an infringement action if the mark is registered in the state.

8. FEDERAL PROTECTION. The federal registration serves as a constructive notice to the rest of the country that you are the owner of the trademark, even if you are not doing business domestically yet.

9. LIABILITY TO THE REGISTERED OWNER. If you don’t register and it turns out that there is a registered owner of the same or substantially similar brand, that owner will have an indefinite period of time to find and sue you for infringement.

10. MONEY, MONEY AND MORE MONEY. If you have infringed on someone else’s name or brand, you may be ordered to change your business name immediately; renounce all benefits obtained from the use of the unregistered trademark; and pay other damages, including punitive damages, fines, and attorneys’ fees.

Findlaw.com

Think about these points in relation to your business.