business name: claiming it as your own

juststartingout · #1 (**permalink**) 08-16-2004, 01:37 AM

i have an idea for a business name and have performed an initial search using the following resources: internet (extensively), uspto database, county dba databases.

the only conflict i have found is a company with a similar name, located in the uk. this business also owns www.[thebusinessname].co.uk. they are in the same industry but offer different services. for example, i offer consulting they offer make-up services.

should i let this prevent me from using the business name?

also: there is no registered trademark for that business and again it is located in the uk, i am in california.

aangelica · #2 (**permalink**) 08-16-2004, 08:19 PM

Unless you are concerned about worldwide company branding, you may be going about this the wrong way. Federal filings for copyrights/trademarks can be quite expensive and are generally done for national branding purposes.

Once you have decided on a business name and the type of structure for your business (e.g. corporation, LLC, etc.), you will simply check for name availability at the state level in the state in which you plan to register/incorporate your business. If the name is not already taken, you will be able to get it as your legal name, allowing you the exclusive right to do business under that name in the state. There are numerous companies throughout the U.S. that all share the same name, but it's OK because they are incorporated in different states.

In a case where ABC, Inc. is incorporated in California but wishes to do business in, let's say, Virginia for example, the company would file to register/obtain authorization to do business there. If another ABC, Inc. already exists in Virginia, then the California-based company would simply choose a DBA (doing-business-as) name under which it will do business in Virginia and register it appropriately.

juststartingout · #3 (**permalink**) 08-17-2004, 12:27 AM

aangelica you've been extremely helpful/insightful thank you!

i am in the midst of writing my business plan now and thinking bigger picture for the future (5-10years). in the short term i'd like to cover sf and santa clara counties (doing business in those counties).

i plan to use the brand/trademark on an organizer that i am now developing in addition to the consulting services i provide...will not having a trademark registered open me up to someone stealing my name...say if i sold this product through retail chains and online? (hence, why i am looking into getting a trademark).

last question, if my home business is in palo alto and i sell a product nationwide...how does that work? with regards to a trademark that is not registered.

eventually, i would like to build this brand.

aangelica · #4 (**permalink**) 08-17-2004, 01:55 AM

Here's the interesting thing about copyrights and trademarks: The rights thereto are pretty much a matter of who does it first.

Theoretically, if you are the first one to bring the product to market under the chosen name, it's your trademark. If someone were to come along later and try to do a similar thing with the same name, you would be well within your rights to send them a cease-and-desist letter and lay claim to your trademark as long as you could establish (via marketing literature, documented sales, etc) that you did it first. (Been there, done that.)

But, certainly, by taking the extra step to register the trademark you would be documenting your ownership rights at the federal level, thereby giving you added protection and leverage that would come in handy in a legal dispute.

Assuming no one currently owns the trademark, you could run with it now (take the product to market) while your application is under review, or wait til the trademark registration goes thru.

Just a heads up, I've seen these things take up to a year as far as the process. In some cases, I've seen the paperwork come back from the USPTO almost a year after submittal only to be told that "more information is required" or the application otherwise needs further wording/clarification in order to be processed. Of course, good things come to those who wait.

That shouldn't stop you from shopping your business plan around in the meantime . . . but make sure you get a signed non-disclosure agreement before letting other eyes see it, and keep a record of who received a copy of the plan and when--this includes everyone from venture capitalists to "friends"! CYA.

Eileen · #5 (**permalink**) 08-17-2004, 11:05 AM

In my home state of Maryland, you can in fact have the same name as another company, as long as the businesses are different types. My business is called Coale Communications, and I'm a copywriter. There's another business by the same name, but they sell cellular phones and communications equipment. No one has ever confused us with each other.

aangelica · #6 (**permalink**) 08-18-2004, 06:31 AM

That's not quite true. Here is an excerpt from the Code of Maryland:

"? 1-504. Name to be distinguishable.

An entity name must be distinguishable upon the records of the Department from:
(1) The entity name of an entity organized or authorized to transact business in the State;
(2) An entity name reserved or registered under this subtitle; and
(3) The disclosed assumed name adopted by a foreign entity authorized to transact business in this State."

"Entity" includes any legal business structure (e.g. corporation, LLC) as well as trade name filers.

It may be, in your case, that one company bears a suffix that indicates its structure such as "Coale Communications Inc.", and the other is just "Coale Communications" (if a dba name). That would make the name distinguishable.

"Coale Communications Inc." would have to transact business under its full legal name. If it drops the "Inc." without registering a trade name or DBA as "Coale Communications", it would technically be in violation.

Eileen · #7 (**permalink**) 08-18-2004, 08:21 AM

That would make sense, thanks. The other business is an LLC. I'm a dba thinking of changing to a subchapter S corporation.

aangelica · #8 (**permalink**) 08-18-2004, 01:11 PM

Hi Eileen,

Don't wait too long on forming the S corp if you plan on keeping the name (and adding "Inc.", "Corp." etc.). States are beginning to modify their statutes to force more distinguishability between LLCs and corporations. Virginia, for example, has a new law which goes into effect in October that basically says if there's an ABC, LLC you cannot have an ABC, Inc.

juststartingout · #9 (**permalink**) 08-18-2004, 02:25 PM

thank you so much for the response [i]again chrissie.

here's another curve ball...would you recommend FIRST registering your trademark, servicemark, copyright at the STATE level (california) prior to the uspto?

i am a small home based business but have a great idea for a corporate name (service mark) and name for a product extension (trade mark)that will be used for merchandise items so the resources are tight. i just want to protect the name for the future. i plan to offer my services in santa clara and san francisco county and due to the beauty of the internet/retail chains offer my merchandise items online/retail across the nation (big picture thinking here).

again, thanks in advance--you've been very helpful!

aangelica · #10 (**permalink**) 08-19-2004, 12:32 AM

Glad I can be of help. Interesting question...I suppose it wouldn't hurt, and it would probably be helpful to register it at the state level, esp. since that would be where you plan to market the services to start with. I'm curious as to how long the state trademark process takes.

There is the question of whether such a trademark/servicemark already exists at the federal level, or if your state trademark would be superceded by a federal trademark if someone else were to come along and do just that. I would recommend hiring a trademark attorney who can answer this and help you in the process.

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