What you name your company is an important decision, and it can have consequences far into the future. I have discussions with entrepreneurs all the time about how trademark law affects their companies’ names. In this post I’ve collected some of the information entrepreneurs need to consider when they are deciding on what to name their companies.
When you organize your LLC or incorporate, you file articles of organization or incorporation with the secretary of state under a particular name. This name appears on the face of the certificate of organization or incorporation, and it’s your company’s legal name.
In each state only one company can have a particular legal name. So if a company of that name (or one very similar) already exists in the state of your choice, you can’t organize under that name. But that doesn’t mean that you can’t operate your business under that name. That’s where fictitious names come in.
Companies are permitted under state law to do business under names other than their legal names. These names are known as fictitious names or d/b/a’s. Although only one company can have a particular legal name in each state, any number of companies can generally do business under a particular fictitious name.
If you search the Missouri secretary of state’s records for “Subway,” for example, you’ll find that a number of companies have registered to do business under the fictitious name “Subway.” Most of these are franchisees of the popular sub sandwich franchise. If for some reason you wanted to do business as “Subway,” Missouri state law regarding fictitious names would permit you to do so as long as you register the name with the secretary of state as a fictitious name. Note, however, that I said this is permitted under Missouri state law regarding fictitious names. That doesn’t mean that it would be permitted under state and federal law regarding trademarks. For more about that, read on.
If you are doing business in Missouri under a name other than your legal name, you need to file a fictitious name registration with the secretary of state’s office. This is required by section 417.200 of the Revised Statutes of Missouri, and failure to do so is a misdemeanor (see RSMo section 417.230). I believe this also includes omitting “Inc.” or “LLC” from your name. I registered “Blue Maven Law” as a fictitious name in Missouri so I wouldn’t have to always use my firm’s full legal name in every communication. Follow this link to the Missouri secretary of state’s website for more information about fictitious names in Missouri.
Let’s not forget about domain names. Since virtually every business needs a website these days, you’ll probably want to make sure you can register an internet domain name that works for the business name you choose. It might not be as essential to have a .com name as it once was, but if doing business under your chosen business name would force you into an awful domain name, you might want to keep searching for the right business name.
Common law trademark rights accrue automatically in the U.S. when you start doing business under a certain mark. In the context of business names, that means, for example, that as soon as I began doing business as Blue Maven Law, I automatically gained common law trademark rights in the name. Assuming no one else had superior rights, my use of the name was safe.
Although we tend to think of trademark rights as something we own, they are more fundamentally consumer protections. They tell the market the identity of the source of goods and services sold under the mark. When products bear the mark of a trustworthy manufacturer, consumers can have comfort that the products are of the quality one would associate with that manufacturer.
I mentioned that common law trademark rights accrue automatically when you start doing business under a certain name. These rights are specific to the types of goods and services you provide and to the geographic area in which you operate. So if I begin providing legal services under the name Blue Maven Law in St. Louis, I gain common law trademark rights, but only in St. Louis and only for legal services. Someone in Seattle could open a law firm under the same name without infringing my common law trademark rights.
Not only are common law trademark rights specific to the type of goods and services provided, as well as geographic area, they also give priority among competing businesses to the first business to use the mark in commerce in a particular geographic area. So once I open a law firm under the name Blue Maven Law in St. Louis, a competitor can’t later put out a shingle in St. Louis using the name. However, someone could open up a Blue Maven construction company without infringing my rights since they’re not in the legal services business.
So type of goods and services, geographic area, and the point in time you start doing business under a name are all important aspects of hashing out common law trademark rights.
Let’s go pro and consider registering your name with the Patent and Trademark Office. One major benefit of federal registration is that it gives you priority nationwide. When I opened for business, I registered “Blue Maven Law” with the USPTO in the “legal services” class. This provides trademark protection nationwide as of that point in time. So although I haven’t expanded into Colorado, my mark is protected if and when I decide to do so.
My favorite illustration of how this works involves Burger King. If you go to Burger King in Matoon, Illinois, you’ll find yourself dining at a small family restaurant instead of the national burger franchise. That’s because the family restaurant has been in business under the name since 1957, which predates the national franchise’s federal trademark registration. The national Burger King doesn’t have a right to sell burgers under the name “Burger King” in a 20-mile area centered on the family restaurant.
Putting it all together
There’s a lot more about trademark law that can affect what you name your company–such as what kind of marks qualify for registration–but this is the point at which I tend to hand off my client to an attorney who focuses on trademark law. Here’s a quick and dirty summary of what I usually cover before handing my clients off to a specialist:
First, you need to determine whether the legal name you’ve chosen for your company is available. Assuming you’re organizing in Missouri, you’ll search the records of the Missouri secretary of state. Here’s a step-by-step guide that I published a few years ago. If you don’t see anything similar, you’re probably in good shape. If your chosen name isn’t available, consider using a d/b/a.
Next, look into whether your first choice for a domain name is available. You can search the whois database maintained by the Internet Corporation for Assigned Names and Numbers (ICANN). This will tell you whether the domain name is registered and, if so, to whom it’s registered. Better yet, go to the home page of a company that registers domain names, such as GoDaddy.com, where you can get suggestions for available domain names. Plus, they can help you try to buy your chosen domain name from the current owner if it’s already registered.
The next part is more difficult. You’ll need to consider trademark law and how it affects your business name. A good first step is to do some basic research to see whether the name is already in use. As with all research projects, Google is a good place to start. You should also search the U.S. Patent and Trademark’s database to see whether the name is already registered. Here’s a link to the basic word search page for the USPTO’s basic trademark search tool (TESS).
Next, you’ll need to decide whether to (1) do a comprehensive search and (2) register your trademark with the USPTO. If you decide to do a comprehensive search, you should hire an attorney to commission the search and to review and interpret the results for you. This isn’t a DIY project. Here are some circumstances where I think a comprehensive search is worthwhile:
- Your DIY research uncovered something worrisome.
- It would be expensive to change business names after you launch (e.g., your nice expensive lighted sign in the parking lot would have to be changed out).
- You plan to do business nationwide.
- People in your industry are serious about trademark protection.
When deciding whether to register your trademark, you should think about it from both offensive and defensive perspectives. On the offensive front, is it important to you to make sure that no one in the country uses a name similar to yours? On the defensive front, would it be onerous to change your business name if someone sent you a cease and desist letter demanding that you quit using your business name?
Here are some things to consider when deciding whether to register your trademark:
- Is your brand name important for your marketing success?
- Are you selling products that will have your brand on the product itself or on the packaging?
- Will you have marketing materials and signage that are expensive to replace?
- Is your domain name important for your internet and social media success (e.g., SEO)?
- Do you plan to do business on a national level?
A “yes” answer to any of these questions suggests that you should consider registering your mark.
Naming your new business can be exciting as you embark on a new venture. But you should carefully consider how trademark law affects your decision. A little due diligence upfront can save you from a lot of expense and heartache down the road.