The familiar phrase from Shakespeare’s Romeo and Juliet tells us “A rose by any other name would smell as sweet.” But what if the “Rose” is your business name, in which you have invested time, money and effort to establish a good business reputation and to become known in your field, and you found that it was suddenly being used by another business unrelated to yours? Would you change the name of your business, since your business still “would smell as sweet?” I don’t think so!
The name of a business is a valuable asset of the business, and most business owners want to protect their names and keep others from using them. No one feels good about permitting another business to ride along on her advertising dollars. And what if there is a likelihood that the two businesses could be confused? There could be problems with customers, suppliers, even banks. What a mess!
This scenario happens more often than you would imagine. A look at the business listings in the greater Cincinnati phone book shows that 7 businesses use the name “Evergreen” and 19 businesses use the name “Express.” Of those 19 using the name “Express,” 3 are in businesses relating to automobiles and 2 are in the field of personnel staffing. And as for business names starting with the word “Family,” there are more than 50.
How can you protect your business name, or service or product name, from use by others? First, you should choose the name with care, trying to avoid common names and descriptive names that others might be using, such as “Cincinnati Packaging.” Second, you should register your use of the name with state or federal agencies, because registration both establishes your use and gives you certain rights to sue infringers.
A business accrues rights in any name, either a trade name (the business name), trademark (a product name), or service mark (the name of a service), through using that name in commerce, and the law protects the first one to use the name with a particular set of goods or services in a particular geographical area of commerce. If a business uses a name in interstate commerce (and who doesn’t these days?), then the business is entitled to register the name with the United States Trademark Office. If the business only uses the name within one state, there are also state registration procedures for trade names, trademarks and service marks in Ohio, Kentucky and Indiana.
The strongest business names, trademarks or service marks are distinctive, fanciful and arbitrary. Think “CINTAS” and “Pepsi Cola.” In analyzing potential names, you should avoid geographic names and descriptive names. The name “California Pizza Kitchen” was denied registration as a trademark because it was geographically descriptive and descriptive of certain foods. You should search the U.S. Trademark database at www.USPTO.gov, or have a search performed for you, and also search the internet, the phone book, and trade directories to see whether the several names you have in mind are previously in use.
After deciding on a name, you should apply for registration with the United States Trademark Office (or file a state registration) in the class of goods and services in which you are using the name. Trademarks and service marks are classified according to their use, and prior use by some other business in one area of commerce will not disqualify your application for a different set of products or services unless there is a likelihood of confusion in the minds of ordinary consumers. As you know, the mark “Delta” is used both for faucets and for an airline.
So now that you have chosen a name wisely and registered it for use with state or federal agencies, what happens if someone starts using the same or a confusingly similar name? You should investigate their use, and send them a strongly worded letter demanding that they cease all use of your name. This letter will state your claim to the right to use this name, will state how long you have used it and whether you have registered it with state or federal agencies. Then it will demand that the other person stop using the infringing name.
If the infringer does not stop, you must assert your rights in federal or state court by bringing a trademark infringement action. If you are successful, and prove likelihood of confusion, or that they are “palming off” their goods or services as yours, then the court will order the infringer to stop using the name, and also to pay you damages. The measure of damages is either the profits earned by the infringer, or the losses your business suffered, during the time that the other business used the infringing mark.
Invest in your business name, protect your business name, and guard against infringers. Afterall, your business name is your most valuable business asset!