It’s very upsetting to find someone using your business name, or one that is “confusingly similar. ” If you’ve taken legal steps to protect your name, you are in a much better position to protect your interests.
* If you are successful, you will be copied.
I learned this lesson the hard way. When my business partner and I started Tables to Teapots (a retail store in Acton, MA), we had no idea how successful we would be. After several years of hard work, a TV feature on Chronicle and a story in Inc. Magazine, our business was booming. Then one day, a customer came in and said, “I didn’t know you’d opened up in New Hampshire. ” Well, we hadn’t opened up in NH. But, an enterprising copycat had opened a store and called it NH-Tables to Teapots.
We were lucky. While we had the rights clearly established in Massachusetts, we had not filed a federal Trademark protecting the name in other states. By taking an aggressive position, I was able to convince the NH copycat to change the name of his business.
Legally, our “rights” to the name attach from the time we used it in commerce. However, we would have been on stronger footing if we had registered the Trademark.
Trademark/Service Mark Registration
Any word, phrase, name, symbol, sound … that identifies or distinguishes your product or service from those made or sold by others, is eligible for Trademark Protection. (Trademark applies to products; Service mark applies to services. )
Check to Confirm that Your Name is Available.
Before you invest in applying for a Trade/Service mark, it’s important to search and see if anyone else is claiming the name or similar name. You can search online for the Internet domain name (www.networksolutions.com). You can also search on the Web site of the United States Patent and Trademark Office (www.uspto. gov). These searches do not guarantee that the name is not in use, but they are a good indication of availability.
Steps to Protect Your Name
1. Reserve the Internet Domain name.
2. Use TM or SM symbols.
Put the Trademark (TM) or Service mark (SM) symbol on your materials. This puts the world on notice that you are claiming the mark.
3. Register in your State.
In Massachusetts, the filing fee is $50 and lasts 10 years.
4. Register in the US.
The Federal filing fee is $375 and once approved you can use the ® (stands for registered mark), and the protection lasts so long as the mark is used in commerce.
5. Register Internationally.
International registration has become much easier with the Madrid Protocol (effective November 2003), which allows a mark to be protected in several countries by filing a single application.
In conclusion, if your business name, tagline or brand is important to your business, then it makes sense to take steps to legally protect it.
Jean Sifleet is a practical and experienced business attorney whose career spans many years in large multi-national corporations and includes three successful entrepreneurial ventures. Jean has extensive experience in dealing with intellectual property matters in the large and small companies and as a small business owner. She has authored numerous books and publications on avoiding legal pitfalls in doing business. This article is excerpted from her new book, Advantage IP – Profit from Your Great Ideas (Infinity 2005). For more information, Jean's website is http://www.smartfast.com