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 Your name must be distinctive at the time the domain name was registered. Your name is identical or confusingly similar to your trademark Anti-Cyber squatting Consumer Protection Act makes it illegal ICANN International Corporation for Assigned Names and Numbers

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 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).

Once you’ve found your name! 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.