How important is it to protect one's business name?
For many companies, the business name is what turns people into customers. Perhaps money has been invested in advertising, or people have learned of the business through word of mouth. What would happen if another company opened up with a similar name and people got confused and thought it was your business? You might very well lose potential or existing customers to the new company.
Let's suppose that your company has been around for some time and customers have come to associate your product or service with excellent quality. What would happen if a similar business began competing with yours but its product quality wasn't as good as yours? You probably wouldn't mind since you would think that people looking for better quality would buy from you, right? But what would happen if their business name was similar to yours - or even the same as yours - such that people didn't realize there were really two distinct businesses? Instead, people began thinking that sometimes your product was excellent and sometimes it was substandard. Now, that's a situation you would want to do something about.
Can another business have the exact name as yours?As shocking as this may sound, it is possible for another business to legally have the exact same name as yours. Perhaps one business has incorporated under the name and the other hasn't, the only difference in the two names being words like Incorporated or Corporation. Perhaps one business incorporated in one state and the other incorporated in a different state. Perhaps neither business incorporated and both operate out of different counties in the same state. As these and other scenarios demonstrate, merely going into business under a particular name does not prevent other businesses from using the same name.
Is there anything that can be done to prevent other companies from having the same name as yours?There may be ways to prevent other businesses from competing with your business with the same or confusingly similar name. Much would depend upon the exact circumstances under which your business and the competing business were operating. For example, if you've been doing business throughout a particular state and then a business with a similar name began competing with you anywhere in that same state, you might be able to stop that business from continuing to transact business under that name. If, however, for many years your business operated and solicited customers only in one state and then decided to expand nationally, it would be difficult if not impossible to prevent existing businesses with the same or similar names in other states from using their business name. In fact, those other businesses could prevent your business from expanding into their territory using the same or similar name.
What can be done to protect one's business name?Under some circumstances, a company may apply to register its business name as a trademark or service mark in the United States Patent and Trademark Office (USPTO). Similarly, application may be made to register one's business name as a trademark or service mark in an state. A trademark may be applied for if the name applies to goods, and a service mark may be applied for if the name applies to a service. The application process for either a trademark or service mark is very similar.
A federally registered mark will offer certain protections on a national scale, even if one is not yet doing business in every single state. A state registered mark will offer certain protections within that state, but may not stand up to the protection of a similar mark registered federally. Thus, if your business name is registered in a particular state and another business with the same or confusingly similar name has a federally registered mark for its name, that other business may be able to force your business to use a different name. Much is dependent upon when the business names were first used as well as where and when they have been used since.
When is the best time to apply for trademark or service mark?The best time to consider registering your business name as a trademark or service mark is prior to naming your business. At that time, you can determine if another company is already using your proposed business name and you can avoid potential conflicts.
For both new and existing businesses, there are various federal and state rules one must follow to apply for registration. If federal registration is desirable, application may be made either before or after the first use in interstate commerce. If application is made before first using the mark in interstate commerce, an intent to use application must be filed. In that case, a second application must later be filed to declare actual use of the mark in interstate commerce. Since two forms must be processed by the USPTO when pursuing the intent to use route, there will be a larger fee than if one were to begin the registration process after the first use.
If state registration is desirable, you will need to check the rules of the state. In Georgia, for example, you may apply to register your mark only after using it in commerce within the State of Georgia.
Is registering a trademark or service mark enough to protect your business name?Although registering a trademark or service mark goes a long way toward protecting your business name, it is not enough. The owner of the trademark or service mark has an obligation to continuously use the mark and to prevent others from infringing on the mark. Furthermore, a registered mark may not prevent anyone already using the same or confusingly similar mark from continuing to do so.
The federal and state laws governing trademarks and service marks are extensive and complex. No one article can begin to cover this area of the law. More information may be obtained from the United States Patent and Trademark Office, or from your state's trademark registration office. In addition, there are numerous books available which explain the process.
For assistance in evaluating your company's particular situation, you might want to contact an attorney who concentrates in trademark law. The attorney can assist you not only with evaluating a potential business name, but also with registering your mark, monitoring others' use and potential use of the same or confusingly similar mark, and pursuing infringers of your mark.