Opinions expressed by Entrepreneur contributors are their own.
Who is The Pizza Maker, anyway? Entrepreneur Mark O'Brien inWhite Lake, Michigan, says he is--and used a federaltrademark to stake his claim. But Allied-Sysco Food Services Inc.,a subsidiary of billion-dollar food distributor Sysco Corp. inHouston, wants rights to The Pizza Maker moniker and filed apetition to cancel O'Brien's trademark. So who'sright?
No one yet, pending litigation. After the U.S. Trademark Trialand Appeal Board canceled O'Brien's Pizza Maker trademarklast year, he countered by filing a federal lawsuit against Syscoand Allied-Sysco. Despite the lengthy legal battle, O'Brieninsists he'll fight to the end. "If I don't win, Ilose my company," he says.
Many small businesses have found themselves caught up in similarlegal tangles. Consider Dee's Cheesecake Factory inAlbuquerque, New Mexico: After years of success, this bakery'sfounder launched a legal battle after discovering a nationalcorporation using the same name, minus the "Dee's."As a result, both companies retain their respective rights to usethe "Cheesecake Factory" name.
"Rights in names or trademarks in the United States arisefrom use in commerce--not necessarily from registration," saysMark Partridge, a Chicago attorney specializing in trademark andunfair competition law. "[Small businesses] have to understandthat just thinking of a name and getting a registration doesn'tgive you a monopoly." Anybody can file a petition to cancelyour trademark if he or she believes you've abandoned it--theexact reasoning behind Allied-Sysco's hot pursuit ofO'Brien's Pizza Maker.
To protect yourself, you must actively use your company name anddocument all business transactions to prove it. Build an identitywith your clients; courts often entitle protection if confusionarises from another company using your name. And get a federaltrademark by filing an ITU (intent to use) application with theU.S. Patent and Trademark Office; this guarantees nationwide rightsprior to use.
To strengthen your strategy, do business in other states."Your rights are limited to where you do business unless youobtain a federal registration," explains Partridge. "[Andremember,] no marks are created equal. Some are weak from thestart, and some are strong." Unique names, such as Xerox,offer far more protection than those that just describe what youdo, such as The Pizza Maker.
It's a lot to keep in mind, but covering your bases willhelp you in the end. Says Partridge, "It's not a losingbattle if you think about it from the start."
Fish Story
By Debra Phillips
When you think of entrepreneurship, you invariably think offishing, right? OK, we don't either. But however unlikely itmight initially seem, the analogy of fishing to business issurprisingly effective in Fishy Business: How the Wisdom of theAngler Can Help You Succeed at Work (Berkley Books, $12 paper).
Co-written by brothers Bill and James P. Ignizio, Fishy Businessextracts sound business advice from such notable fishingcommandments as, "Any lure that catches fish is a goodlure." In this instance, the underlying entrepreneurial truthis that you should stick with products or services that are doingwell--and not pursue unnecessary diversification. Another mandate:"Don't fish for pike like you would for bass." (Inbusiness-speak, this means you should know your customers.)
Designed to appeal to fishers and nonfishers alike, FishyBusiness is a fun read. Or, in angler-speak--our version of it,anyway--the fish are really biting.
Contact Sources
Mark Partridge, (312) 554-7922, mpartidge@pattishall.com
