You don’t want to start work with someone else’s trademark. For this reason, it’s important to conduct a name search before you lock in the name of your business. This is especially true if you choose an unusual or unique business name that will also be used to identify your products—Z Pop, Inc., for example, to sell a new carbonated drink called Z Pop. If someone else in your field is already using this name or has registered it as a state or federal trademark or service mark, you will be an infringer if you start to use the name (based on the fact that customers are likely to be confused as to the source of either of the two businesses’ services and products). In such circumstances you will likely be forced to give up the name.
Here are some suggestions for checking to see if others are using a business name similar to the one you have in mind:
Search the Internet. You’ve probably already done this, but if you haven’t, type the potential name and the product or service into a search engine and sift through the results. For some marks—for example, Apple—a search engine may unearth hundreds or thousands of results that are of no value for your trademark searching purposes. For that reason you need to focus your search, using some of the searching tips provided at the Google site. Alternatively you may choose to use a fee-based trademark search engine such as Saegis on Serion (www.saegis.com). You should also search domain names to determine if a business has claimed the domain for its product or services. To search domain names, go to www.whois.net.
Check state and county records where business names are filed. To avoid a claim that you’re unfairly competing with another local business by using their name, check the records of your state’s office where corporations and LLCs are registered—usually the secretary of state or corporations commissioner—as well as the state office (if any) that maintains a list of assumed or fictitious names for corporations, LLCs, partnerships, and sole proprietorships. In addition, if assumed or fictitious names are filed at the county or local level, check the lists for the counties or localities in which you plan to do business now or in the future.
Check the federal trademark register. Because goods and services are widely marketed over the Internet as well as through mail-order catalogs, your small business—even though you think it’s local—may find itself competing with national companies. It makes sense to confirm you’re not infringing on a trademark or service mark that is federally registered. All of the federally registered trademarks (as well as current applications) can be located by searching the trademark records at the United States Patent and Trademark Office website (www.uspto.gov). Click “Search Marks” and search the database for potential conflicts with your name.
Hire a search firm. If you are investing heavily in promoting your products or services under a certain mark, you may wish to pay for a trademark search. A full comprehensive search may cost between $150 and $300 per mark searched. The ranges of rates reflect variations in search coverage, the type of report you get, the experience of the searchers, and economies of scale. Be wary of firms that advertise an unusually low price to draw you in; they may later add on charges so the overall cost becomes excessive.
So now you’ve done your search, whether by hiring a search firm or performing the search yourself, and you have the results in hand. What do the results mean? When you read through the names that were found in your search, be on the lookout for the following matches:
An identical match. If your search revealed names that are identical to the one you are using or plan to use (and keep in mind that a sound-alike—for example, “phat” and “fat”—is considered to be identical), this doesn’t automatically mean that you must scrap plans to use your proposed name, though it should make you pause. If the identical name is being used for a very different product or service from the one you are producing or plan to produce, then you have good reason to move forward with your plans to use the name and register it as a trademark or service mark. For example, just because a plumbing business in Coos, Oregon, calls itself Z Pop doesn’t mean you, in Arizona, can’t use Z Pop as the brand name for your soda pop. That plumbing business in Oregon is not your competitor, and your use of Z Pop for your soda pop will not likely confuse customers into thinking that your soda pop is related to that plumbing business.
On the other hand, if you find an identical name being used on an identical or closely related product or service, such as another soda pop product, then you really should consider choosing a different name. Even if the company using the name seems like a local outfit in a faraway place, you can’t assume it will never expand its territory.
An identical (or very similar) name that is linked to a very famous company or product. For example, suppose you want to name your dog toys Chewy Vuiton. Alas, this is very similar to the Louis Vuitton trademark. In trademark lingo, using a name that’s similar to a famous existing name and that blurs or tarnishes the famous mark—even for an entirely different product—is referred to as “dilution.” If it turns out that the mark you’ve had your eye on is famous and highly marketed, don’t touch it. Let it go and find another name.
A name that is very similar to the name you want to use and it is being used to market the same type of product or service that you are planning to create or offer. For example, suppose your proposed name for your pool toy is AquaMate, but you learn that another company sells an inflatable Mermaid named AquaCate. In this situation, you should seriously consider choosing a different name. How close is close? That is a very tricky issue and is often a matter of considerable subjectivity on the part of the courts and the USPTO. If you’re not sure and really want to use the name, consider hiring an attorney specializing in trademark law to help you decide whether the two names are too close for comfort.
We’ve given you a few guidelines for evaluating your search results, but there is more to evaluating competing names than what we can provide in this chapter. If you think your situation is more complex, please consult Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Richard Stim (Nolo).
Excerpted from Legal Guide for Starting & Running a Small Business, by Fred Steingold (Nolo).