Trademarks

All right, ladies and gentlemen, we are here with Wes Carter of churchlaw.tv and Winners & King. How are you doing today, sir?

I’m doing wonderful.

How are you?

Doing great. I know you are going to bring some enlightening and illuminating information, as always, that’s going to help our listeners. So what have you got for us today?

I always appreciate your optimism.

Yes, yes.

Today we’re going to talk, I think we’ve mentioned it briefly before, but I’ve run into it just quite a bit in the last a few weeks, which dealing a lot with trademarks. So when you’re starting a church, you’re starting a ministry, pay special attention to the name that you’re going to use for the church or ministry. And so, for instance, if you pick a name, let’s just say you pick a name because it’s on your heart, it’s a name you fall in love with, maybe has some special attachment to the name, and you start using it for a year, two years. So let’s go back and think about everything you would put that name on, so probably some signage on the building.

Yes, t -shirts. I would want some t -shirts.

T -shirts, coffee mugs, all the stuff that goes in the bookstore, all of your church bulletins, your church business cards, a website, Facebook, Twitter, Instagram, whatever, you know, depends on, I guess, how young of a pastor you have. All of these things are going to have your brand on it, not to mention your congregation in the community that you’ve spent a year or two years, that’s how they know you. You’ve built up that name recognition. And then one day an attorney like me sends you a letter and says, sorry to tell you this. I want to tell you this as nicely as I can, but I have church over here that has a federal trademark for that name. And it actually does business, you know, it’s a large church.

It does business in your state as well and many other states and federal law. requires us to police this trademark, meaning to stop you from using it or we will lose our trademark rights. And so if we don’t stop you from using it, then we can’t stop someone who’s using it in bad faith. So someone who’s really trying to knock it off or do something intentionally wrong with it, we lose that right as well if we don’t stop everyone. So that church is then put in a very difficult position. One, if it’s a close case, you can think about fighting it, but you’re talking about a lot of money.

I mean, plan on spending bukuza money to go all the way through a trademark litigation. Or you negotiate some sort of a time frame to change your branding, and then you have a lot of money and effort and recognition go down the drain just to rebrand.

So here’s my question for like anyone listening. How often do you think this sort of thing happens? Because I’m sure most people would think, you know, there’s a chance that could happen or maybe there’s a few coincidences, but I think most people think that’s probably rare. Would you say it’s a rare thing or does it happen pretty often?

Happens pretty often. You would be surprised. I mean, I have that situation, which is a large national organization that you didn’t know about. I also have on a smaller level, two churches in the same town. So one was there first, one uses a different name, and then, so the new church that starts, or a new ministry starts, and then the old church, the older, what we call a senior user, as opposed to a junior user, comes up and says, hey, you started a church 10 blocks down the road from me with the exact same name, why would you do that? Well, we didn’t know you were there, or we really liked your name, we just didn’t care.

You know, you get all kinds of answers. Or, what a lot of people have a mistaken belief about is that if I tweak that name just a tad, then I’m good. add an S to it to make it plural. That happens a lot.

Really?

Yes.

Okay. And that doesn’t work?

You can’t do that? That doesn’t work. So let’s say we have a foundation church and then someone files foundations church.

Or if I had generation church and then someone goes down the road and starts a generations church.

With an S. With an S. That’s different. That’s not the same, you know. And the test here is, you know, is it confusingly similar? And obviously those things are still likely to cause confusion to just someone looking for a church out there. So it happens in multiple instances, and you lose a lot of time, money, and name recognition in building those things up. And so what you can do on the front end when you start the church, when you start the ministry, is to look at I mean, it’s really a great tool.

The United States Patent Trademark Office, USPTO . gov, has a kind of complicated, but it’s an online search engine to search trademarks. I mean, if you Google names, you’ll find… them all over the world. If they’re large enough to have a website, which usually means they have like 10 people and they’ll have a website. Google will pick up Facebook. There are ways to see who else out there is using this name.

If you have a name and then you have to decide, if they’re in Maine and I’m in New Mexico, maybe we never run into each other. But if there’s a federal trademark, that covers all 50 states no matter where they’re located. So you kind of have levels of concern. Federal trademarks, big red flag. Just another church out there on the other side of the country. you have to decide what your plans are.

If you’re gonna stay in this state, they’re gonna stay in that state.

That may work, but these are things you need to make conscious decisions about and not just leave to chance. I see. So if I get on the website, you know, you said USPTO . gov, and I’m searching to see if someone has my name. If I don’t see the name, Is it safe to say, oh, I can just go forward with it? Or is this something that I should still seek out a lawyer about how to start my church and get my name?

What would you say? If I search and I don’t see it, am I safe?

Or what do I do? Well, some of these are hard to figure out. Now, obviously, you’re going to need help, in my opinion, starting the church itself. But strictly talking from a name perspective, if you have a very unique name, Those are one, the easiest to protect, and two, the less likely that you’re going to need help navigating through a bunch of other people using the name. And so that would be my first piece of advice. If you find anything that’s even potentially a conflict, I would suggest you talk to someone who knows a little bit about trademark law and intellectual property.

I try and some people you just can’t get off of a name. They love the name You start having all these dreams about the sign the big lights But I try to move people to something that’s novel and unique, you know, the stereo stereotype is Apple for computers, you know that there’s no literal high in there other than that’s what they chose for a brand. And so the more unique it is, the name, the easier it is for you to protect and to differentiate yourself in the marketplace that has thousands of churches. I mean, probably tens of thousands. So I mean, I alone have worked, my firm has worked with thousands of churches and so I can’t even keep track of my clients by church names because there’s so many that are so similar.

I have to use client names for my mind to separate between the two because someone will tell me I’m with you know Zion, Agape, very common names that are used throughout the country.

And so that’s something else to think about is that as you build your church, if you want to build a brand along with it and differentiate yourself, Think from the very, very beginning about your name and trademark issues. So once again, showing reasons why it would be wise to seek out counsel and because if I’m stuck and I don’t even have a name or say I had one and I can’t use it now, I love what you were just saying about the apple. You could maybe walk me through and kind of guide me through some processes for coming up with different names?

Because I want people to know, maybe if you’re stuck, could you also help in that regard?

Sure. I mean, I’m not the most creative person in the world, but I can certainly give you ideas of what’s worked for other clients and try to encourage you to think outside the box. Things that aren’t necessarily words from the Bible or geographical references to Israel, you know, things that are used commonly, you know. And if you can think a little bit outside that box, you know, for instance, the churches that have letters and numbers, that’s an acronym for something, those work great because nobody else probably has that same acronym, unless it’s God or IHOP, you know. But, you know, those kind of things or, you know, just a new way of looking at branding a church as opposed to an old school church name. Those things can help a great deal.

Like I said, one, another issue we haven’t talked about yet, just to mention, is if you go to one of those names everyone uses, good luck finding a domain name. Because probably somebody’s already got the dot -com, the dot -net, the dot -org, all of them.

So, you know, that’s all these things surrounding picking a name when you start your church or ministry that a lot of people don’t think of until it’s too late and they’re already stuck in that name and have to just kind of trudge through. Yes, I remember when I was a young girl and I would I grew up in an area that was really just tons of churches, a lot like Tulsa, lots of churches where I grew up in Tennessee. And I remember seeing First Baptist all the time. And it was so comical to me because I thought, all of these can’t be the first. So I just love that you can kind of help your clients think outside of the box.

Because sometimes having another set of eyes, another brain, someone who has more experience can kind of help. unfortunately, how these problems come up. And so I think it’s just the wisdom part that, you know, I’ve walked down this path with many pastors before, and if I can point some things out to prevent a lot of drama and heartache for someone else.

I mean, that’s part of my job. I love it. So once again, ladies and gentlemen, we are listening to Wes Carter from churchlaw.tv, Winters and King. Really, they have so many years of experience. Tell the listeners, what are they getting when they work with you?

What all comes with your services?

What are they getting? Well, we try to be a full -service law firm. We don’t do patents or maritime law, which is ships and stuff, but just about anything in between. So we have been working with churches and ministries since the 80s. We have a very diverse practice with litigation, family litigation. obviously our church and ministry practice.

And we just try to provide everything from cradle to grave that a church or ministry could need.

So contracts, leases, employee issues, lawsuits, just the whole gamut. I love it. I love it.

So if you are listening, you have a question, if you want more information, what do they need to do, Wes Carter? Well, you can visit our website for, we have some great information on there, www.churchlaw.tv.

You can call us 918 -494 -6868 or get on the website. There’s a contact us page where you can shoot us an email.

Awesome. Thank you so much for listening.

We’ll see you next time. All right. Thank you. Thank you, sir.

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