Legal Question in Business Law in California

Re: Trademark

Are those other companies providing the same kind of service? Are any in California? You really need to discuss this with a lawyer for a proper opinion. There are facts and issues you haven't stated that will determine the answer. If ten other companies are already using the name, it sounds like it is probably a descriptive or generic term, in which case, it may be difficult to get it recognized as a trademark. (However, even generic terms may become a trademark if they have been given secondary meaning by your use.) Even if you succeed in registering the term, the companies that presently use the term may have the right to continue using it for their businesses.

You can try to register your mark both with California and with the federal Patent and Trademark Office. It is easier to register a trademark with California--and one place to start; but if you contemplate franchising the business, you probably need federal protection.

Re: Trademark

You have to look at a couple of things: (1) If the mark is not federally registered, the businesses using the name have common law rights under most state laws. Common law rights, as compared to a federal mark, are geographically limited to where the business is located or doing business. (2) Two businesses can have the same trademark if there is no potential for confusion as to source of the goods/services. For example, you could have BonNettarina selling nectarines and BonNettarina selling Italian gelato and the two businesses could each obtain federal rights. An intellectual property attorney will consider these issues in recommending whether to proceed with a federal application. To the extent that there are potential bumps along the road to getting a trademark caused by the other businesses use of the names, the application process might be protracted as compared to a stronger mark.

Re: Trademark

You already have common law rights to the trademark, subject to any prior senior users. If they're in the same business and have a federal registration, they can cause you a lot of problems.

As far as franchising goes, go to the Franchise Foundations website (www.franchisefoundations.com). It has a lot of useful information for companies that plan to enter the franchise industry.

Good Luck!

Mr. Franchise