An Entrepreneur’s Trademarking Nightmare

Kelly PhillipsCurrent Trends

June 26, 2007 – An update to this article. Adecco has stepped up and made it right by compensating both Turner and donating to a non-profit organization that helps captive elephants. I’m so glad Adecco did the right thing. Many corporations wouldn’t have. If you want to help out Turner and AroundtheWorldin80Jobs.com you can donate to his IndieGOGO project before Friday, August 23, 2013.


 

“Do I need to register a trademark for my business?” is one of the great dilemmas entrepreneurs face. A lot of us are starting a business on a shoe-string budget, trying to replace a full-time income, or completely bootstrapping a new venture. When every penny you spend feels like a million bucks, shelling out a thousand or more dollars in legal fees to trademark an idea that isn’t making you any money seems a bit counter-intuitive. I’m not a legal professional, and I can’t give you any advice on this topic, but recent events unfortunately illustrate what can happen when you don’t get that trademark protection.

Tuner Barr built his website AroundTheWorldin80Jobs.com blogging about his experiences traveling abroad trying out different jobs and hoping to find his own passion and path along the way. He recently posted that “my entire brand, image and web personality was swiped for use in a marketing campaign by some massive multi-billion dollar a year company, without ever being asked for permission or acknowledged.” Can you imagine waking up one day and feeling like your entire business that you spent years of blood, sweat and tears to build was hijacked? I can now, and to Turner it’s all too real.

Turner hasn’t shared a lot of details yet, as I’m sure he is mired in a bunch of legal actions and simply can’t talk about it. But I did do a minor bit of research on my own. It seems that legally, the trademark for Around the World in 80 Jobs is held by Adecco. They registered it on April 9, 2013. This is public information, and you can view the record yourself by doing a search at the Trademark Electronic Search System (TESS).

Adecco TrademarkIf we go over to Whois.com and look up the registry information on the Around The World in 80 Days domain name here is what we find.

Around the World in 80 Days Domain Registration

There is a domain privacy lock on it, but we already know Turner owns the site. This record shows us that he registered the domain on October 23, 2011. His first post on the website is December 14, 2011. So clearly, Turner has been actively using this brand for almost two years.

What does this mean? First of all, it means that just because you are using a name for your business doesn’t mean you have any legal right to that name. Unless you trademark it, you are vulnerable. One of the benefits of having the trademark is the ability to bring action in a Federal Court to entities that violate the trademark.

Secondly, when you trademark something it’s common practice to do a search on the trademark database, but also to cast a broad net searching around to see if anyone has been using the name. Why? Because even if you trademark a name, there have been cases where trademarks have been overturned when someone can prove their usage of the name predates the other person’s trademark. Trademarking a name that is already in use is a huge risk. Check out this FAQ item from the USPTO:

Challenge a Trademark

Pretty confusing, isn’t it? It’s almost like the person who uses the name first has a right to it even if they don’t trademark it. But if somebody trademarks it after it’s in use they have the right to bring action against anyone using that trademark. But if you’ve been using the trademark already you have a right to that trademark… Ummm – I think I need some chocolate before I go any further with this one. If you want a view of this case from an actual lawyer, check out this great post by Rachel Rodgers Law Office.

As for Adecco, other than the standard “it was not our intention…” statement they’ve been pretty quiet.They are being bombarded with negative press. Check out these posts showing on Adecco’s own website via their Twitter feed today:

Adecco Twitter Feed

Even if they win the trademark case, their reputation is going to take a serious hit if they don’t own up and do right by Turner Barr.

And so the saga continues and will be very interesting to watch, maybe even precedent setting. Will Adecco listen to the legion of social media followers urging them to do the right thing? Will Turner spend huge amounts of money in court to regain control of his brand? Or will it all be eclipsed by the next absurd celebrity baby name (North West, Kim – really?) This may be one situation you can have some true impact on. Here are the social media handles of the involved parties. Why not give them your thoughts on how this should all turn out? Personally, I’m rooting for Turner.

Turner Bar

Twitter: @80worldjobs
Facebook: Around the World in 80 Jobs
G+: Turner Barr

Adecco

Twitter: @AdeccoWaytoWork

Facebook: Adecco Way to Work