Do You Have The Legal Right
To Use Your Business Name?


by Guest Columnist C. Bruce Combs

There is a tale that is told about an enterprising American who went to Europe in the late 1950's and opened a small typewriter and office machine store and called it "IBM." Then, like a patient angler on a lake, he sat and waited.

Sure enough, in a couple of years along came the real Big Blue, apparently not having the foresight to secure the rights to their own name outside of the United States. His patience rewarded: IBM paid the expatriate dearly for the right to use its own name.

Variations on the IBM story play out every day on Main Street America: A business is started, the owner spends significant sums developing a name or trademark, only to later discover someone else already has rights to the name in other states or the world.

Or, perhaps never intending to expand beyond one's hometown or state, a business owner is dismayed to receive a letter from a lawyer stating that the business infringes on another company's business name.

Not having the right to use your business name means additional expense to acquire it, or worse yet, being forced to change your name.



How Can I Avoid This Problem?

Fortunately, with a little time and research, the savvy entrepreneur can avoid these pitfalls and register the name as a legally protected "trademark."

A trademark exists if a business name is used to identify a business' goods or services in the marketplace. For example, Nike® is both a corporate name and a trademark for shoes. A pizza restaurant or retail store will likely use its corporate name on stores as well, and will want to consider registering the names as trademarks.



Where Do I Start?

The first step in this process is determining if your business has a name worth registering as a trademark.

The accounting firm of Pencil & Pusher with a single office on the corner of Oak and Main Streets probably does not need to bother with registration; the multiple-location retail shoe store Best Foot Forward, however should continue reading.

If you determine your business name is in fact worth protecting, the next step is to do a preliminary search to make sure someone else has not already staked claim to the name.



How Can I Find Out If Someone Else Is Using My Name?

One avenue for performing a preliminary research on a trademark is to use an Internet service such as www.nameprotect.com. For a reasonable fee, the service will search the federal trademark database, state databases, as well as general business directories such as Dunn and Bradstreet. Within several days you will have a completer report in your mailbox. The U.S. Patent and Trademark Office also has a database at www.uspto.gov that can be searched for free.

Assuming your name is not the same, or deceptively similar, to one already in use, the next step is to register the business name as a trademark. If you only anticipate doing business in your home state, it would be sufficient to register at the state level with your Secretary of State.



What If I Want To Register My Business Nationwide?

If the business plan calls for business to be conducted in more than one state, then is is prudent to register the trademark federally. A packet for registering a federal trademark can be obtained by calling the U.S. Patent and Trademark Office (703-308-HELP).

Alternatively, the Internet service I've mentioned, www.nameprotect.com will refer you to an intellectual-property attorney who will, for a reasonable fee, prepare the federal registration forms and advise you how best to protect your business name.

Expect to pay approximately $50 to register a trademark at just the state level and $245 for federal registration. (Costs may vary from region to region)

The online search service of www.nameprotect.com charges $35 to $275 for trademark searches, depending on how comprehensive a search is performed. In addition, a fee of $65 is charged if you wish the Internet company to prepare your federal registration forms for you.



Some Final Thoughts

If you would like to read more about registering a trademark, check out the intellectual-property law section of www.nolo.com. The Internet search company and U.S. Patent and Trademark Office mentioned above also has some basic trademark registration information.

Finally, although most anyone can do much of the research and legwork for registering a trademark, I recommend that you consult an attorney familiar with trademark law to assist in registration of the trademark.

(Note: C. Bruce Combs, an attorney and CPA, is a partner with the law firm of Kastings, Combs and Kauffman, P.C., in Bozeman, Montana. His practice emphasizes business, real estate and trust estates law.)

(NOTE: This article may NOT be reproduced in any form without written permission of the author.) And he's a lawyer so watch it!!


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