Protecting your good name - trademark infringement - Column

Recently, my father-in-law spotted an ad in a Los Angeles newspaper touting a hip-shaping Hipslip--complete with registered trademark notation. The garment wasn't a Hipslip, however. Hipslip is a registered trademark of mine. We are now pursuing legal action.

Far too often, retailers and the media use trademarked names as generic terms. The department store ad highlights an offshoot of success: the need to protect your good name.

In 1988, I introduced the Hipslip--made from nylon and DuPont's Lycra--to give women extra support under the body-hugging garments I designed. I knew that new ideas and products are quickly knocked off, or imitated, so I registered Hipslip with the U.S. Patent and Trademark Office almost as soon as I coined the name. The familiar registered trademark symbol, [R], shows that federal trademark registration has been secured for a business name (hence, Hipslip[R]); the [TM] symbol is used until a certificate of registration has been issued.

While it's flattering to see your product become an industry standard, I've learned it's also dangerous. A company's identity, reputation, and market share can easily be lost if a product's name is allowed to become a generic description or a common term for all similar products.

Today, my Manhattan-based company, Bodyslimmers [TM] By Nancy Ganz, ships more than 90,000 Hipslips a month and has annual sales of nearly $10 million. It offers a full line of body-shaping garments, including my newest curve-creating invention, the Butt Booster[TM].

Early on, I was too busy designing and handling the overwhelming response to the Hipslip to pay close attention to every trademark infringement. What changed me into a fierce protector of my rights was the discovery that a past customer, a well-known catalog retailer, was selling a less-expensive control slip made by one of my competitors and calling it a Hipslip. Sales were being made based on my product and name from which I received no benefit. Moreover, Bodyslimmers' reputation and future sales were on the line as customers purchased lesser goods and believed them to be the real Hipslips.

Turning a negative into a positive, I persuaded the catalog company to meet with me, and we came to an agreement. Today it is one of my best customers.

Not all infringements are intentional. Often, in looking for ways to describe an item, the media use the most descriptive, popular term without realizing it is a trademarked name.

Stopping infringement starts with knowing how your trademark is being used. Hire a press-clipping service to track references to your company or products, including those in ads. A nationwide review typically costs about $200 a month, plus about $1.50 per clipping.

Making your company's name unique also helps protect your rights. By itself, Bodyslimmers is generic enough to be modified slightly and used without infringement. But by adding my name--Bodyslimmers[TM] by Nancy Ganz--I've given the name both legal protection and added identity.

Protecting your rights also means notifying the bad guys. At the very least, have your lawyer write a letter informing the offending party of your trademark and position in the industry; as my experience with the catalog company proves, this can boost business. At its extremes, legal action involves pursuing offenders for some of the proceeds they have made using your name.

To avoid problems upfront, get your name out. We have taken out full-page ads in trade publications.

Most entrepreneurs--and I was in this group--spend their time developing a product, not protecting its name. But shielding your trademarks isn't hard. If you let things slide long enough, you could learn the hard way how much it costs to have your name taken in vain.

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