Pick a winning Business Name

Susan Berston

SMBS 135

What’s trademark law?

• National or global name conflicts?

• Internet, mail order, nat’l chains “local” isn’t what it used to be

• Consequences of having to change your name?

• Landing a secure legal name

What’s trademark law?

• Prevents a business from using a name or logo that is likely to be confused with one that a competing business already uses.

• Allows businesses exclusive use of certain names to help consumers identify goods.

• Legal name: official name of entity that owns the business

• Trade name: Name the business uses with the public.• FBN: Used when the trade name of a business is

different than its legal name• Corporate name: When a business incorporates

What’s a trademark?

• A word, phrase, design or symbol used to market a product or service.

• Service mark used to market a service

• Legal rights to trademarks which gives owner the power to prevent others from using

• See page 30 for examples of business names and trademarks

More than just a name

• The trademark applies to business names and much more – logos, designs, slogans and packaging features.

• “Just Do It” and “I have a dream” speech?

So what is trademark?

• Any word, phrase, logo or other device used to identify products or serves in the marketplace.

• Includes the name of the products and services themselves and the name of the business selling them.

• Register with the U.S. Patent and Trademark Office

• It must be used in public (see page 31)

Trademark and varying degrees

• Of use. Just because you own a trademark doesn’t mean you can prevent someone else from using it.

• “Infringe on your trademark” means others are using it and your customers may become confused.

Strong vs. Weak Trademarks

• Distinctive business names receive the strongest legal trademark protection. Pepsi, Xerox, Google, Ebay and Mtn Dew

• Why? Because consumers decide what to buy based upon a name.

• Weak? “Speedy Dry Cleaners” (pg. 32) or personal names

• The weak can become strong (Tommy)

Unfair competition

• Even if your TM is weak, doesn’t mean others can use it.

• When to trademarks conflict? Ford, Scott, United. Only when customer confusion results. United Airlines United Moving Vans.

• Page 34

Pam’s Coffee Stop in Weed, CA

• There’s another one in Barlow, CA

• What is a national chain begins using the same name? In Weed, CA?

• Exxon vs. Ekzon?

• Jiffy Oil vs. Jiffy Lube? (36) What to do?

• Dilution Exception: No gas station called Nike and no shoes called Exxon.

Trademark issues online

• Do the two trademarks cause customer confusion?

• Geographic distance irrelevant in cyberspace

• Offline business names competing with online business names

• A website launches a worldwide or national business – 36

• Checkers Tool and Die website…

Domain Names

• Choosing a legally safe domain name• Your domain name functions as a

trademark if you conduct business at your site – selling stuff.

• That’s true whether or not you register your domain name with the U.S. patent and trademark office.

• Generic domain name won’t be protected such as software.com or books.com

Domain name same as business name?

• You decide.• Register your domain name and no one

else can take it. Go to register.com• Try to come up with a business name

that’s good for business, available as a domain and as a trademark.

• If it’s not that important, naming becomes easier.

• Example: (38) Lexicon bookstore

Cybersquatters

• Those who register domain names in hopes of selling it back to the intended user at a profit. Madonna wins lawsuit in 2000.

• Your name must be distinctive at the time the domain name was registered.

• Your name is identical or confusingly similar to your trademark.

• 1999 Anti-Cyber squatting Consumer Protection Act makes it illegal

• ICANN International Corporation for Assigned Names and Numbers

• http://www.icann.org/en/udrp/udrp.htm

Meta Data

• Information embedded in the HTML source code of web pages that search engines such as Google look for when conducting a search.

• Example: 39 Digital Video• Calvin Klein used “Playboy” and “Playmate” as

meta data and Playboy Magazine sued. Weak: house and garden can be used and House and Garden magazine wouldn’t be able to sue you.

Do some early digging for names

• Easier to search for a domain name than a trademark, so do that first. Start with the world wide web.

• What’s the size and geographic scope of your business?

• Watch for look a-likes and sound a-likes.• No one place to search because some

trademarks are just used without registering. (40)

• Check Federal and State trademark databases.

Checking around

• InterNIC—Public Information Regarding Internet Domain Name Registration Services

• Phone directories

• Industry sources and trade publications/business directories

• Federal trademark database (no matter how small or local your business is)

Check the CA secretary of state database

• Check for sole proprietorships, LLCs and corporations all separately.

• CA secretary of state maintains a state trademark registry at its Trademark Unit.

• Call 916-653-6814.

• County FBN statements – but beware, only exact matches come up!

Critter Care?

• Use of the name, not registration is what creates trademark ownership…

• Critter Care was a corporation in California doing business under its own name and not a fictitious one, so it did not have to register with any county FBN databases.

• So, watch out!• Check the Federal Trademark Database

maintained by the U.S. patent and trademark office (PTO).

• http://www.uspto.gov/main/trademarks.htm

Once you’ve found your name!www.uspto.gov

• Register it with PTO (Patent Trademark Office) and with the State of California.

• This is a “No Trespassing” Sign• What is the name is being used by a company

selling very different products and/or services from you?

• “Natures Calling” Plumbing or Clothing?• Proceed with caution. Growth, territory. 44• There are two registers – the principal (stronger)

register and the supplemental (weaker) register.

Choosing a domain name

• Smart, memorable and clever• Some are names of whole categories of

goods or services like drugs.com or coffee.com

• Register several domain names – some of your products or services and other related names.

• Make sure your domain name doesn’t conflict with someone’s trademark.