Oct
28

NEW BUSINESS FORMATION TIP – AVOID THE MISTAKE OF CHOOSING A COMPANY NAME THAT HAS TRADEMARK ISSUES, DOMAIN NAME PROBLEMS, OR OTHER ISSUES

Picking a company name that meets the above criteria is often easier said than done.   The last thing a new company needs is a legal dispute involving the alleged infringement of someone else’s trademark.  Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, your compliance will generally require you to stop using the mark, transfer any domain name rights, etc.  The upshot?  You’ll have to start over in branding your business.

Here are some tips on getting your company off and running with a viable name.

  1. Do a Google search on the name to see what other companies may already using the same or a similar name.
  2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
  3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark.  Additionally, if you plan to file a trademark registration application for your company name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark.
  4. Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (sABC) of the registered domain name (ABC) could result in a trademark dispute.
  5. The best company name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
  6. Come up with at least three names you like and get the reactions of trusted individuals.
  7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the creator’s intellectual property rights to your company.
  8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.
  9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
  10. Consider having an intellectual property law attorney do a professional trademark search.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company name and building your brand could save you some real headaches and a lot of money down the road.  

 

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida

Where Legal Meets Entrepreneurship

This blog is for informational purposes only and does not constitute legal advice.