CHOMP ON THIS: What we learned about registering a trademark

Getting good at what you do doesn’t come from not making mistakes, it comes from getting up off the floor after you fall down and putting up a warning sign so others avoid the pothole you fell into.” Mike Monteiro, Design is a Job

You may know by now, the genesis of Rush3 Product Design Studio was the result of a practicing architect, a slow economy and, perhaps, drinking some beer. The Kebo® One-Handed Bottle Opener hit the market 4Q 2011, captured a 2012 International Housewares Association Innovation Award and was put on the shelves of The Museum of Modern Art and fantastic independent shops across the country soon thereafter. Since then, this grassroots journey has been part learn-as-you-go, part gut-feel and part loving-what-you-do all while practicing architecture. It was invigorating to see how an architectural background could translate from buildings to objects and refreshing, and sometimes daunting, to learn about a new industry.

So when our young son asked "Where are the Chomp Stix?" one night several years ago while we were eating takeout, looking of course for chopsticks, the next product idea was born. Imagine if chopsticks could actually "chomp"?! What if child friendly chopsticks were designed to have mouths and teeth?! Such fun. It didn't take long for Chum the Shark, Al the Alligator and Teri the Pterodactyl to arrive in Rush3's sketchbook.

A strategy was set to bring them to the market, as well as protect the invention, starting with applying for a patent and getting a registered trademark for the name. We submitted our trademark application to the United States Patent and Trademark Office. We did this ourselves instead of hiring an Intellectual Property attorney, frankly, because: a) the USPTO website lets you; and b) cash flow was tight for this start-up business. We immediately began using Chomp Stix™ as allowed and in March 2013 launched the product at the International Housewares Association where it was an Innovation Award finalist. The USPTO registered the trademark (you know that little "R" in a circle) after their internal vetting process was complete, as well as a public comment period where anyone who thinks this is too similar to a trademark already in existence can state their objection. No red flags; Chomp Stix® was ours!

Or was it? Fast forward to the spring of 2014, we received a certified letter from an attorney representing the owner of a similar trademark filed before ours. We were to cease and desist using Chomp Stix® as it is confusingly similar to the other mark. Surely this is a misunderstanding, after all the United States Patent and Trademark Office GAVE us the registered mark of Chomp Stix®.  It is worth noting here our utmost respect for someone protecting what is theirs; we endeavor to do this with all of our inventions and you should too.  After hiring a fantastic and long overdue Intellectual Property (IP) attorney, we tried to navigate solutions to maintain the brand we created and marketed for a year, to no avail. It became clear that rebranding was the most sound option for our business. Our product would now be called Munch Stix™.

Rush3 is now in the process of re-branding from Chomp Stix® to Munch Stix™. Same fun product, different name.

Rush3 is now in the process of re-branding from Chomp Stix® to Munch Stix™. Same fun product, different name.

The realization of this stung for a while as the name Chomp Stix® literally came out of the mouth of our babe. Rush4 loves telling the story of how he mis-pronounced "chopsticks" one day and thus launched the product idea. And Rush and I love pitching the inspiration to retailers, at tradeshows and to the press. It's just a fun product with a great backstory. But take away the nostalgia and emotion and you still have a fun product that retailers and consumers are noticing.

So to all of the accidental product designers and entrepreneurs out there, please learn from our pothole here when pursuing a trademark and consider the following steps:

  • Brainstorm several names for your product. Names that are truly new or simply do not exist in the English language have the best odds.
  • Head to the computer and do an old-fashioned Google search to see what comes up. This may seem obvious, but there are dozens of examples of trademarks that you can technically obtain but may not want to after seeing the company it keeps online. Of course this will only reveal marks that are already in commercial use; it is quite possible for someone to own the mark but not have their product or service for several years before the registered mark expires.
  • Before you get too attached to a name, do a preliminary search on the USPTO website yourself to see if there are any obvious conflicts for your desired marks. Review not only the names, spellings, and derivations but the categories as well.
  • Hire an Intellectual Property attorney like our favorite at McNair Law Firm and communicate in detail your product or service, self-vetted list of potential trademarks in priority order. They will perform a thorough USPTO search with experienced eyes, advise on which mark is the most solid and file the appropriate applications. While very few things in life are 100% guaranteed, it is well worth the money to avoid a situation like this one, protect your idea and increase your odds of smooth sailing as you bring your product to market.

So this, as Mike Monteiro so aptly puts it, is our warning sign to all of you rockstar entrepreneurs out there. Onwards!