Lately, there is a heightened awareness of trademarks, but many people have no idea whether the name they have chosen for their business is or contains someone else’s trademark. Keep in mind that (a) one acquires trademark rights by using a name in commerce, (b) the first to use the name has superior rights to those who come later, and (c) registration with the United States Patent and Trademark Office (USPTO) is not a prerequisite for obtaining enforceable rights in a trademark.
This became a reality for a client, who already had printed business cards, filed and published a fictitious business name statement, obtained a Board of Equalization License, began negotiating a lease in the business name, and drafted a business plan. We were consulted to form an LLC and found that the name was available with the Secretary of State’s office. Most would have concluded at that time that all was well and filed the Articles of Organization to register the LLC. We went further and looked at the USPTO website, and found that someone had filed an application to register the trademark of the exact name in the exact class of goods and services. While it would have been possible to register the LLC with the Secretary of State, it would have been an infringement of prior user’s trademark to actually do business under that name. Thus, it was back to the drawing board to select a new name.
It is critically important to clear your business name before you spend a lot of money, time, and energy. We suggest that a basic search be conducted and, if the name is clear, a full commercial trademark search then be conducted to ascertain its availability. The full commercial search will find registered marks, applications for registration, common law trademarks (those that have been in use but are not formally registered), and domain names. We also recommend that, as soon as you have cleared the name, acquire the Internet domain name in order to ensure that you have the rights on the Internet to your own trade name.Matthew I. Berger Law Group, A Professional Corporation (805) 456-1200 10 E. Islay Street
Santa Barbara, CA 93101