By Debby Winters
It’s not easy to name a business. The name has to convey the right message and generate interest. In addition to making sure your business is going to attract customers or clients, you need to consider some trademark issues. Getting a cease-and-desist letter from a trademark owner alleging that you are infringing their trademark may make you scream. Changing your name after you’ve spent time and money developing your brand is frustrating. With a little knowledge and planning, however, you can decrease your risk of trademark infringement.
Trademark Issues: How to Stay Safe
Trademark infringement may lead to legal battles where you lose precious time and money. Therefore, it’s important that you research the names you think will be suitable for your business. You may also find it helpful to hire a trademark attorney to help you avoid legal issues.
Don’t take trademark issues lightly: These conflicts can completely annihilate your financial resources. An ounce of legal prevention is worth a pound of cure in terms of time and money.
Here are 7 tips to keep in mind.
- Incorporation Issue. When you incorporate your company, it’s important to note that your corporate attorney will probably not look for potentially conflicting federal trademarks or conflicting names in other states before filing your incorporation paperwork. Watch out! You may be able to incorporate in one state and use a business name that may describe your products or services and still infringe another company’s federally registered trademark or service mark. This is a problem if you want to advertise on the Internet or sell your products or services nationally.
- Professional Trademark Search. When picking a business or product name, the safest approach is to hire a professional trademark attorney to conduct a search for federal and common law trademarks that are identical or similar to the name that you want to use. Watch out for commercial use of identical names or names that are confusingly similar to potential customers, as to the actual source of goods or services.
- Domain Search. Go to a domain registration site like Go Daddy and search for the name that you want to use. It can save you time and hassle to start with a domain search regardless of whether you want to build a website around the name. Check out whether any of the domains are taken. If the dot com domain for the name that you want to use is taken, this is a BIG RED FLAG!
- Common Law Rights. Even if a mark is not federally registered, common law rights arise upon commercial use of a name and prior use may cause future legal problems. It is bad business to infringe another’s trademark and it can get you sued.
- USPTO Search. Go to USPTO.gov and search for federal trademark registrations on your proposed name. The PTO has a free, easy, on-line way to search for previously registered and pending trademarks with TESS (the Trademark Electronic Search System). If the mark is LIVE, the registration is current. But watch out! A DEAD mark may still be in use and the owner may be relying on common law rights. Be sure to check whether the mark is actually being used in commerce.
- Google Search. Check for merchants who are using the name for goods or services. If a lot of businesses are using similar names, your mark will be weak and your protection minimal. Moreover, you may be at risk of allegations of trademark infringement from prior users.
- Record your results. Finally, make a record of your pre-name selection process by writing down the date and what you did before selecting your final name. You want to create evidence that you had a good faith basis for selecting your name and that you didn’t intentionally use a mark that is likely to cause confusion with a mark being used by another merchant.
- Ways to create your record:
- Print out your search results.
- Make notes about your reasoning and conclusions.
- Makes notes about your domain name and Google searches.
- Put your preliminary search records in a file and keep them.
With a little preliminary groundwork, you can increase the odds that you can use the name that you want to use and minimize your risk of trademark infringement. It is always best to seek the help of an experienced trademark attorney. Good luck in selecting the name of your new business.