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What's in a Name?

Article Overview: The "name game" caught up with a colleague recently and she has been venting to all of us ever since. She has been doing business as a sole proprietor for almost 10 years [knowing that makes me shudder; I have operated as a professional corporation since inception] and, given the nature of her consulting practice, has never been overly concerned about liability. We all have varying levels of risk tolerance and hers is quite high.

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What's in a Name?

The "name game" caught up with a colleague recently and she has been venting to all of us ever since.

She has been doing business as a sole proprietor for almost 10 years [knowing that makes me shudder; I have operated as a professional corporation since inception] and, given the nature of her consulting practice, has never been overly concerned about liability. We all have varying levels of risk tolerance and hers is quite high.

And while she certainly could have protected the name of her business without forming an entity, she didn't [have I mentioned that she has a high tolerance for risk?].

How did this lack of name protection catch up with her? Evidently, a business in Illinois which had been using the same name in the same industry had protected the name [it is quite inventive and creatively describes her business services]. Given the propensity to Google anything and everything these days, the Illinois company came across my colleague, whose talents are touted in many national industry publications.

Now, before we go further, let me assure you that a trademark registration is NOT required by the state or Federal government. In fact, you can establish rights in a name just by legitimately using it!

Why then did my friend find herself in receipt of one of those nasty-grams called a "cease and desist" letter? Well, it turns out that the other business had trumped her use by an actual Federal filing with the U.S. Trademark Office. A Federal trademark gives the owner a lot of rights that simple use doesn't, including the right to pursue an infringer in Federal Court.

Had my colleague been aware of the filing at the time – something which is available to all interested parties on-line – she could have retained intellectual property counsel and filed an objection based on prior use.

Fortunately, all is not lost. A good intellectual property counsel has been retained to help my colleague pursue a possible amicable solution that may result in a continuation of her use, subject to certain conditions. I have, however, seen this become an issue for clients who want to broaden their use of a non-registered name for a variety of reasons and watched them come up against time-consuming and expensive roadblocks.

My advice? If you are starting with an intent to build a brand around a particular name, be sure it's a name you can use legally into the future.

A simple, on-line state and Federal search is a good place to start. I call it a "quick and dirty" search since it is not formal nor does it require a lawyer. Visit uspto.gov [search trademarks] and follow the directions for a basic search. In Massachusetts, visit sec.state.ma.us/cor [search the trademark base].

If one or more versions of your name choice pop up in your preliminary search, it's time to call an expert. Be aware, however, that a Federal registration generally trumps all [although not always].

A preliminary consultation with intellectual property counsel is also a good idea. Trademark law and the rights it grants is complex and a 100% "do-it-yourself" process may end up costing more in the long run than you hoped to save by going it alone.

Knowledgeable registration on the state and Federal level is a small investment to protect the future growth of your business!

So remember, as I always counsel, better to be safe than sorry. Make sure now that the business name you've worked so hard to build is, in fact, yours to keep!

Okay, back to baseball… Play ball!

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Article Tags: intellectual property, name game, professional corporation, risk tolerance, sole proprietor, trademarks

About the Author: Marijo McCarthy
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Marijo McCarthy is principal of Widett and McCarthy, a Boston-area law firm that helps small business owners grow their businesses with pragmatic legal advice, mentoring and a solid team of professional advisors.

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