How To Protect the Brand Name of Your Engineering Firm

By Josh Gerben, Esq.

Engineering innovations surround our day-to-day lives and providing those innovations to others can be one of the most fulfilling (and challenging) careers. While many engineers work for top corporations like Boeing, many decide to stake their own claim and start their own firms, where they manage a team to create new innovations.

However, good ideas are always enough to “break through” when running your own engineering firm. Effective brand protection can help engineering firms differentiate themselves from the competition and establish a standard of excellent represented by their trademarks.

Your Engineering Firm Name is Your Brand

If you own your own engineering firm, you are likely an expert in your specialized field of engineering. For many firm owners, they find that while they may be engineering experts, they aren’t marketing experts. These understandable gaps in expertise often lead engineering firms to de-prioritize trademark protection, not realizing the importance of their firm names – i.e. their brand.

Developing a strong, protectable trademark allows an engineering firm to invest in its name in traditional advertising and in building awareness for the firm in a variety of ways.

It also prevents pitfalls like using a name similar to one that is already in-use, which can cause legal liability for trademark infringement. These headaches can be costly in both legal fees and the cost of re-branding (and losing all of that name recognition.)

There have been trademark lawsuits against engineering firms that arise over name of the business itself.  Intel Corporation, manufacturer of the famed Intel CPUs, sued the engineering contractor Intelspec International, LLC in October 2011, claiming that their business name alone diluted Intel’s trademarks that use the word ‘Intel’ (to date, there are over 60 active marks that use this word).  Intelspec’s website was taken down the next year, and they seem to no longer be in business.

Protect Your Inventions, Too

Engineering firms usually focus on preparing work for others.  However, with invention being at the heart of engineering, it is easily explained as to why engineers apply for patents for the innovations that they, themselves, create.  Patents help prevent someone else from copying an invention’s design and function.  

However, the names of those inventions can be as important as the inventions themselves. Once your invention is ready to be sold, trademarks prevent someone else from using your name to market similar products.

For example, DuPont, one of the world’s largest science companies, understands this importance – they have over 500 active trademarks with the USPTO.  They recently won a lawsuit filed with The Hague in Netherlands against a garment manufacturer over the use of their trademarks DuPont® and Nomex®, a flame-resistant fiber.  DuPont claimed that the defendants were attempting to sell counterfeit protective garments, and referencing the trademarks in descriptions.  The Hague sided with DuPont, ordered the offending goods be destroyed, and DuPont to be awarded damages.

How do I protect my engineering firm’s name?

First, it’s important to do due diligence in researching the proposed name for your business.  While the Intel lawsuit is a high-profile example of what can go wrong with a name, it’s important to be aware of local businesses as well.  A small scale battle took place in California in 2016.  The firm “GMEP Engineers” filed suit in California in 2016 against competitor “GMEP Engineering Consulting” over their use of “GMEP”.  While GMEP Engineers do not own a USPTO trademark registration for this phrase, they are alleging common law infringement.  The case was recently settled last month. Due diligence includes doing your own research but also hiring a professional to provide an analysis of the legal risks before you invest heavily in a name.

Once you’ve decided on a name, then you can apply for your US trademark registration with the United States Patent and Trademark Office.  Expect this process to take 9+ months if the government approves your mark and no one else opposes your request.  You can also read our blog post for a more detailed breakdown of this process.

After you’ve obtained your registration certificate, it is up to you to enforce your trademark.  This includes conducting regular searches to see other instances where your business’ name may pop up.  If you find an instance that you feel could negatively impact your business, you should contact an attorney to help you decide how you want to proceed with legal action.

Owning your own engineering firm is your chance to make your mark on the field and do things your way. Strong name recognition can help you develop your business and set it up for long-term success. However, you should always know the risks and not cut corners – starting with protecting your trademarks.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.