Trademark Infringement: Knowing How Not to Name Your Company

Many of us have aspirations of starting a successful company. I know I did when I started Post Falls Law, LLC. But what does it take to have your own company and why does it even matter? Like many things in life, your company will probably be judged by its “cover”- err, I mean name. So, let’s start there. Your company’s name is the primary representation of what your company is or does. It hopefully strikes fear into the hearts of your competitors and garners adoration from your patrons. But how do you know if it’s right? That’s a question to ask marketers. That has nothing to do with the law… as such I will refrain from addressing it (after all, I am a lawyer). What I can tell you, however, is how you can know if it’s the wrong name; because, if it’s the wrong name, you’ll receive a very intimidating letter in the mail from an attorney who is threatening to sue you if you don’t change your company’s name. That’s not pleasant. So, let’s learn how to avoid such un-pleasantries.

First of all, if the company is named after you or a geographical location you’re more than likely just fine. Take for example the two law offices I have owned: Frantz Law, named after myself, and Post Falls Law, LLC, after the city. Our Nation’s laws won’t allow a company to monopolize common names. After all, there are only so many names to go around. You would practically be barred from starting a company if your last name was Johnson or Smith.

So, if you’re naming the company after you, you probably don’t need to read the rest of this article, but if not, read on. The first place to start is with the Idaho Secretary of State. The Secretary of State maintains a list of all businesses formed or registered to do business in Idaho. If you see another company listed there that is identical or very similar, it would probably be best to think about another name. There is an exception: if the services offered are very different. Take the example of the company: “Jumping Bar.” If you want to start a ballet school and name it the “Jumping Bar,” but there is already a beverage company named the “Jumping Bar” you’re okay. 99.9% of Idaho citizens would not make the mistake of wondering if the Jumping Bar ballet studio was the same product as the Jumping Bar beverage service. The two are so unrelated that no one would confuse the two. Consequently, there would not be any trademark infringement.
Next, I would check the listings on the United States Patent and Trademark Office (“USPTO”). You could skip straight to this step if you wanted to, but it’s much more difficult to find what you’re looking for if you don’t know what you are doing. That’s why I like to start with the Secretary of State’s office. On the USPTO’s website, it has a national registry of all companies that have registered trademarks or service marks (i.e. company names and products). Furthermore, many of the trademarks are actually symbols, such as the Nike swoosh; they’re not even names. Regardless, the USPTO goes a step further than the Secretary of State’s office. The USPTO tells you the industry in which the service mark or trademark is registered. Take, for example, Post Falls’ local company of Guardian Angel Homes. That name has been registered. If you perform a search for it, you’ll see four listings (three of which are all “Guardian Angel Homes”). On the right, you’ll see an indicator “DEAD” or “LIVE.” If it’s dead, that means it’s no longer a valid registration. If it’s life, then you better check it out. Only one of the listings for Guardian Angel Homes is “Live.” If you click on that listing, you’ll see the mark as well as the “Goods and Services.” In this case, “Guardian Angel Homes” is service-marked for “providing assisted living facilities.” So, if you wanted to start a home building company called “Guardian Angel Home Builders,” you’d be just fine. After all, no one will think the two are related.
If your industry and your company’s name are not very different from what you find there, then you really should rethink the name of your company. If the coast is clear, then go ahead and use that name! I can’t guarantee it will bring you success, but at least you won’t start off on the wrong foot.

Post Falls Law can help you with trademarking