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Why New Companies Should Always Do An Extensive Name Search [e187]

Nasir and Matt talk about how one company rebranded in New York but failed to do a name search nationwide.

Transcript:

NASIR: All right. Welcome to our podcast, Legally Sound Smart Business, where we cover business in the news and add our legal twist – just like a little lemon, as I like to say – to those business news stories. My name is Nasir Pasha.
MATT: And I’m Matt Staub. I don’t know if you like to say that but you’ve said it, like, a couple of times.
NASIR: That’s all I say. I love to say that.
MATT: Yeah, this podcast is like a lemon – sour.
NASIR: And yellow.
MATT: Used for lemonade.
NASIR: And it’s a fruit. You listen to it when you’re thirsty.
MATT: Exclusively during the summer.
Getting off-track here, we’ve got to talk about this – where is this is? Well, Texas and then New York, I guess.
NASIR: Nice.
MATT: Two of your favorite states.
NASIR: Yup.
MATT: This has been a very Texas and New York themed week it seems like.
NASIR: We covered California too, a little bit.
MATT: Yeah, it’s the spread of our firm, I suppose.
NASIR: Yeah. We’ll need to get Illinois soon too, once we start practicing there.
MATT: What we have is a company who came up with a new name for their startup called TripleMint.
NASIR: That’s original.
MATT: I didn’t realize it actually means something in the real estate industry. Triplemint means you have a pristine – sorry – immaculate condition of an apartment with an immaculate living space kitchen and bathroom.
NASIR: Oh, okay.
MATT: Yeah, triplemint, I get that. They have this startup which actually has already raised some funds – $1.65 million – from some people.
NASIR: Wait, this is pertinent because some of the investors are Tyler and Cameron Winklevoss, those two twins.
MATT: Winklevoss.
NASIR: Yeah, those are the twins that are famous for accusing Mark Zuckerberg for stealing their idea for Facebook. Go ahead. I think it comes into play.
MATT: So, they’re just a real estate brokerage in New York. That’s it?
NASIR: Yeah, but they’re a little bit different – funny enough, I’m looking at a screenshot of their site and it says, “Why we are different.”
MATT: That’ll answer our questions.
NASIR: There’s pictures of the city and some pictures. So, you see what we see. No sales pressure. Technology rules. I have no idea what that means but what I do know is that they kind of have a startup mentality. I think their capital and their assets are in their technology. They allow a lot of innovative searching and those kinds of things. I’m trying to figure out exactly what makes them original but I’m sure some of our listeners are familiar with them already.
MATT: Yeah.
NASIR: They have kind of like a Zillow interface to be able to see listings and things like that which I guess is cool.
MATT: Yeah, there’s another business in Texas – Austin, specifically – called Triple Mint Real Estate, also a brokerage, smaller brokerage, less people. But, you know, it’s going to be doing the same thing as TripleMint – one word, lowercase – in New York. The Texas one started in 2006, well before this New York one started up, and I guess that’s where – well, we’re not really at a dispute right now, but just an interesting point because the New York one wants to be nationwide. Well, as you alluded to at the beginning of the episode, Texas seems to be a pretty big state in where some of the action is at so I think, if you want to be nationwide, Texas is probably going to be a spot you would want to be. Maybe New York, California, Texas would probably be my go-to three, at least initially.
NASIR: Yeah.
MATT: What’s going to happen when TripleMint 2 expands out of Texas where Triple Mint Real Estate already exists? I guess that’s where the potential problem lies.
NASIR: We can dig deep in the law here. Let’s just do that now and then we can talk about kind of conceptually about naming yourself and so forth. Here we have Triple Mint Real Estate based out of Austin. Let’s assume that they don’t have any trademarked filed rights, and I believe in this story that we saw, I don’t think that they do, and let’s say that TripleMint, this startup company in New York, because they just got $1.65 million, I’m sure they have lawyers to take care of that, they file a trademark – I don’t know if they have a trademark yet or not – but let’s say that they register their trademark and it’s approved, now you have this Triple Mint Real Estate that was using their name beforehand and now this is a trademark file. Now, does Triple Mint Real Estate have to stop using their name? No, most likely not because they may have obtained through the course of their own use a common law trademark even though they didn’t register. And so, now it becomes an issue of whether or not this trademark registration is contestable or not, and that depends on how long it’s been registered. I think after five years it becomes incontestable. But even then, just because you have a valid trademark doesn’t mean that the other party still doesn’t have a valid common law trademark and that you have exclusive use to that trademark nationwide in every single circumstance. Keep in mind that there’s a presumption that you do. That’s the purpose of the trademark registration. But, if someone has pretty much partly established the trademark then they do have substantial rights with that.
MATT: I just search. Both the TripleMint and Triple Mint Real Estate, neither of them have any trademarks. There’s been a few for TripleMint – one word – that have been filed but they’ve all been toothpaste, gum, or liquor related so actual mint.
NASIR: Oh, yeah, triplemint.
MATT: None of them have been related to real estate – at least when I typed in “triplemint” and then “triple mint.” So, yeah, there, I mean, on the trademark side, I guess we’re looking at first to use which is going to be 2006, which I think is before 2011 or whatever.
NASIR: What you do is, if you do 2011 minus 2006, and if you get a positive number, then it’s before. If it’s a negative number, then it’s after. That’s how I do it.
MATT: Yeah, thanks. Usually you’re bad at the math.
NASIR: I’m not bad at the math.
MATT: I wanted to get to something I found interesting in at least one of the stories about this was the first Triple Mint said they wished that the second one would have called them and just let them know about it but, I mean, I don’t want to have a problem with them not calling them.
NASIR: I kind of have a problem with them naming their startup TripleMint a little bit because, I mean, I’m just looking here. If I search just “Triple Mint Real Estate” or let me do something else, “Triplemint Broker,” in both cases, triplemintrealestate.com comes up, not triplemint.com. Point being is that I know most people don’t do a whole trademark search to make sure that whatever name they’re coming up with for their brand isn’t taken even though they should, but at least Google it, right? I mean, at least start with that and, unless this website’s completely new, I’m sure if they would have done a little research, they would have found, “Oh, someone already has triplemintrealestate.com and they’re using it. Maybe TripleMint’s not the best name.” I mean, at the same time, I understand they’re just looking at it, “Oh, okay, this is a three or four-person brokerage is Austin so who cares?”
MATT: Well, the thing is it’s not like they just started off either. This was a rebrand.
NASIR: Exactly.
MATT: They used to be Suitey which I think is way more clever than TripleMint.
NASIR: Well, TripleMint’s cool once it’s explained to me, but I didn’t catch that.
MATT: Yeah. I feel like, unless you’re in the real estate field, you’re not going to know. That’d be like you and I creating a name for a law firm that’s like a funny lawyer joke that nobody else would get.
NASIR: Exactly.
MATT: Res Ipsa Loquitur.
NASIR: Res Ipsa.
MATT: Did I even get that right? I don’t even know. Zero percent chance of transcript is correct on that, by the way.
NASIR: Instead of Pasha Law & Associates like Pasha Law Et Al. That would be good.
MATT: Could be.
NASIR: But what’s stupid about the law – oh, not stupid about the law but – what’s silly about it is that it’d just be Latin so the inside joke would just be Latin phrases. Anyway, I think, from a startup perspective, at the least, you know, in this day and age, you shouldn’t run into issues where you pick a name that you think is clever where someone else is basically using the exact same name, you know? That seems a little silly to me.
MATT: You know, what’s funny is I just looked, I search Triplemint and there was an article about the second TripleMint, the new one, the rebranded one on TechCrunch that was posted yesterday and has nothing to do with this sort of name issue and it just is about them rebranding and maybe it depends on who you ask whether this is an issue or not.
NASIR: I also don’t like their logo because it reminds me of mint.com, it’s very similar to it. They use the dot of the “I” as a leaf where mint just puts a mint leaf next to it but I don’t know – still.
MATT: I think the goal – I figured it out – is it’s targeted towards millennials I believe.
NASIR: Yeah.
MATT: Lots of millennials buying houses in Manhattan right now, probably.
NASIR: People are starting to, I’m sure.
MATT: Lesson learned.
NASIR: Yeah, lesson learned, takeaways are just do a Google search at least and then, if you are really going to be spending money on this brand, do some trademark searches maybe as well – and maybe they did. again, maybe they did and maybe they saw this Triplemint Real Estate out in Austin and disregarded it and decided to go for it which is fine too because it’s not like it prohibits them from using the brand either once they file their trademark.
MATT: Yeah, and this, I mean, this is a real world topic we talk about with clients. If they don’t have a name in mind or maybe they have a couple of ideas, like, this is the discussion that happens and I tell them, “Look, step one, just type it into Google and see what pops up.”
NASIR: Yeah.
MATT: I mean, who cares what names have been taken as a trademark or registered with the state at that or DBA at that point, just look at and see what’s out there first.
NASIR: Yeah, as a first step, exactly.
MATT: If the URL is taken, you have to get one of those dot-sucks domains.
NASIR: Or dot-pizza. They should do a Triplemint.pizza which, by the way, in case people don’t realize, we have pashalaw.pizza – go to it now, please.
MATT: Still can’t believe that.
NASIR: Yeah, in case you guys missed it, I sent it to Matt and he thought I was joking. For, like, a whole week, he didn’t realize it was up and I’m like, “No, seriously, we have pashalaw.pizza.”
MATT: It’s pretty funny. I tried to order pizzas on there many times and nothing’s gotten delivered.
NASIR: Oh, it’s coming. It just gets delayed. Okay, guys. Thanks for joining us everyone and hopefully your week went well and we’re ending it on a high note with Legally Sound Smart Business.
MATT: Yeah, keep it sound and keep it smart.

Nasir Pasha & Matt Staub

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