Trademark Your Agency’s Name to Protect Against Lawsuits
by Fred GebhartWhat’s in a company name? For iconic names such as Apple and Virgin, the answer is image, recognition, market positioning and financial success.
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But that’s not why corporate travel agency owner Wendy Burk rebranded her La Jolla, Calif., firm under the name Cadence earlier this year. Burk’s choice was more dramatic: change her longstanding name, Travel Dynamics Group, or pay hefty legal fees to defend a trademark suit brought in 2010 by Travel Dynamics International.
“We were the first to use the Travel Dynamics name and you almost always have grandfather protection,” Burk told Travel Market Report. “But you have to pay attorneys to protect those rights, and travel agencies don’t produce that rate of return.
“The other company took our name and gave us lemons, so we made lemonade. We took the legal challenge as an opportunity to rebrand ourselves as Cadence. As the name suggests, we’re moving forward.”
Name disputes in travel
Travel Dynamics isn’t the first name dispute to arise in the travel industry, said Paul Ruden, ASTA’s senior vice president, legal and industry affairs.
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Name disputes usually arise when a new company chooses a name that is already being used. Case in point: Travel Ad Network is being used by both the trademark owner, Travel Spike, LLC, and a newer company calling itself TAN, or Travel Ad Network.
Another common problem is two companies with the same or similar names that have been separated geographically but then find themselves in more direct competition. Hilton has been defending its name in courts worldwide, since at least the 1950s, vying against individual hotels and chains that have attempted to use the Hilton name.
Fair game
It’s also not unheard of for a new company to trademark a name that is already being used, then force its established competitors to change their names.
If a business name has not been trademarked, said ASTA assistant general counsel Daniel Zim, it is fair game for anyone who is willing to file the necessary forms with the U.S. Patent and Trademark Office (USPTO).
Registering a trademark for your business name isn’t cheap – an uncontested trademark registration usually costs between $375 and $700 – but it’s a lot less expensive than fighting to keep your company name after someone else has trademarked it. That can cost tens of thousands of dollars – with no guarantee of success.
“It makes more sense to avoid potential infringement by protecting your business name yourself,” Zim said.
The Travel Dynamics case
Burk launched Travel Dynamics Group in 1995. Fifteen years later, the company had expanded to include divisions in corporate travel; meetings, events and incentives, and high-end leisure.
There were other firms using versions of the name Travel Dynamics to sell business and leisure travel in other parts of the country, according to Burk. But there were no conflicts because the various Travel Dynamics companies were in different local or regional markets.
“We had a strong regional identity and client base in Southern California,” Burk said. “Travel Dynamics International was even a supplier for us at one point. We were in the San Diego area, they were in New York, and there was no confusion in the marketplace.”
Trademark OK’d in 2008
U.S. Patent and Trademark Office records show that New York-based Krana Enterprises Inc. began using the Travel Dynamics International name in 2002 and filed a trademark application in 2007. The trademark was approved in 2008.
In 2010, Travel Dynamics International filed suit against Burk and Travel Dynamics Group in New York Southern District Court.
Travel Dynamics International did not respond to Travel Market Report’s requests for comment.
Deciding to rebrand
“We could have kept our name, based on first use, but it would have been a lot of legal expense,” Burk said, explaining the decision to rebrand her firm.
“It takes more than creating a business name and filing your fictitious business name and doing business. You also need to trademark your name. It takes a trademark attorney, but trademark attorneys are a lot cheaper than litigation attorneys.”
Trademark attorneys are also cheaper than changing a company name.
Switching identities
Changing corporate identities means changing websites, changing collateral materials, changing contracts, changing electronic and paper forms, changing financial records and accounts, changing tax records, changing Facebook and Twitter accounts – in short, changing everything that once carried the old name.
It also means changing the company identity internally and getting customers used to the new name.
Customers were the easy part for Cadence, Burk said. “Clients absolutely did not care about changing names. We are a relationship-driven business. Our client relationships have everything to do with our people and nothing to do with our company name.”
Stronger image
Rebranding the company has been a positive step, according to Burk. She would not have gone looking for a new name without an outside push, but Cadence offers a stronger image, a more powerful color scheme, and a renewed sense of purpose.
“It made us do some serious thinking about what the company is, what it is that we do best, and how to focus on distinguishing ourselves as a unique entity. Distinguishing yourself from the competition is what is important in a service industry like business travel.”
