Should I Trademark
My Business Name? 

Face it, there are some times when being big, or at least LOOKING big, can be an advantage when you’re in business. Some of your customers and some of your suppliers think that BIG means more reliability, a better price and higher quality. WE know that’s not necessarily true, but if making your company look bigger brings more customer orders, you may want to consider doing the things that will provide that look.

One of the easiest moves you can make, though the cost can vary greatly, is to incorporate. Mary Jo’s Creations, Inc., has a more “big business” feel than Mary Jo’s Custom Dolls. Please consider the tax implications before you incorporate, though, and make sure that it is right for your business.

Another good opening move is to get a good graphic artist to design your company’s logo. Logo costs can range from inexpensive to “if you have to ask, you can’t afford it!” so shop carefully. Please bear in mind that graphic artists can be better at some subjects than at others. Even if your sister-in-law who does the cute logos for the local specialty toy businesses can give you a great break on price, she may not be the best bet for your computer software company. Take a look at the designer’s portfolio to see if any of the work shows a style that looks right for company logo.

This is something that VentureConsult.com recently experienced. We have been using the name "Venture Consulting" as a dba (doing business as) in the state of Colorado for several years but found last fall that the state had given it as a corporate name to another company two years after we first began to use the name. So although we were allowed to continue using it as a dba, we chose to change the name of our company to VentureConsult.com because we already had VentureConsult.com as our established domain.

Bottom line? If you're using a DBA, you may be unable to prevent a junior user from using the same name in your state, although you may continue use it. If someone is already using the name you choose, you could be liable for damages and might be caught up in an expensive legal suit, so it's worth checking things out to make sure you can use a name.

This is a good time to talk about trademarks.

Essentially, the first to use a name in trade gets the senior right to continue using that name. You can't get a trademark, or servicemark, for something that describes a product or service in general. For example, you couldn't trademark "Maids", but you can trademark something specific like "Merry Maids." The more distinctive your name is, the more likely you'll be able to trademark it. This can lead to some pretty interesting made up names.

For example, my favorite ethnic fast-food restaurant is a place called Z-teca, which does reasonably authentic or upscale Mexican megaburritos at a reasonable price. Unfortunately, when they started the chain, they forgot to check to see how clear they were from similar names. Not only did they get threatened with lawsuits in Colorado by other restaurants, such as Z-Teja Grill, they were not clear to roll out beyond Colorado. After consulting with a corporate names guru, they're rolling out a name change this March. I'll be eating at Q-Doba, and they can stop worrying about getting hit with suits from users in other states.

In order to establish a trademark or servicemark, it's not enough to simply claim it. You've got to use it. To get the right for a Federal trademark, you've got to actually use it in more than one state. A trademark becomes valid across state lines if it's placed on goods that are sold, or at least transported, across state lines. There are a number of trademarks out there that have very limited production and sales every few years to maintain the company's right to that trademark. This can lead to some of those "specials" you see in the grocery store. For example, soft drink companies often package their regular product under another name. A limited production run, sold in more than one state, can keep a trademark active that may be valuable to the company in the future.

Servicemarks must be used or displayed in the sale or advertising of services which are sold in more than one state.

Theoretically, trademarks can only be used with the good or service that's being sold in connection with the trademark. That's why you'd have a tough time opening a McDonald's restaurant in the U.S. and many other countries, but might be able to do just fine with McDonald's sporting goods. Unfortunately, that's not clear cut, because McDonald's is a famous name and can defend against dilution of their trademark, so you're last name had better be McDonald if you're going to try it and you should talk to an attorney before committing. Changing your name can be expensive. One thing that you should be aware of is that if a mark is registered with the U.S. Patent and Trademark Office (http://www.uspto.gov/) , that's considered to be good legal notification for anyone using it in the United States. You could continue using it in the same states you'd used it in before, but you'd be barred from expanding under that name to any other states if your name is trademarked by another company.

For many years in the town of Empire, Colorado, the Hard Rock Cafe served local miners and tourists. When the Hard Rock Cafe national chain came into Colorado, the Hard Rock Cafe was allowed to retain its name because of prior use but not without having to defend itself through a challenge by the Hard Rock Cafe's corporate attorneys. Recently, Amazon.com was sued by an Amazon Bookstore in Michigan. If you're not sure, it's worth running a search with the government or through a service to determine if the name you're planning to use is available.

The Trademark Search Library contains a copy of every registered U.S. trademark. All active trademarks are available in cross-referenced alphabetical and design sections. Trademarks in numerical order are available on 16mm microfilm and in bound volumes. Microfilmed records of trademark applications, abandoned applications, and expired registrations are also available. Automated searching is available to the public by use of CD-ROM Products, the Automated Trademark Search System (X-Search), and the Trademark Reporting and Monitoring System (TRAM), 2900 Crystal Drive South Tower, Room 2B30, Arlington, VA 22202, open weekdays (except holidays) from 8:00 a.m. to 5:00 p.m. For information call 703-308-9800.

The U.S. Patent and Trademark Office has a search utility available on the web at http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html for trademarks. Please be aware that it is not an exhaustive resource and doesn't cover state-only trademarks and DBAs.

FOR MORE INFORMATION: http://www.uspto.gov/ And one of the best self-help legal resources out there, Nolo Press, can give you a lot more information than this short overview did. Check their trademark resources out at: http://www.nolo.com/encyclopedia/pct_ency.html .