Legal Question in Business Law in New York

Re: Incorporate & Naming Company question

There is a very common misconception that one may register any business name as a trademark. This is not necessarily true. Trademarks are not necessarily business names, and business names are not necessarily trademarks. Trademarks, also called 'brand names' and 'logos', serve as unique identifiers of the source and quality of goods and services to the relevant consuming public. Business names, aka commercial names, identify business entities. If goods and/or services are offered for sale to the relevant consuming public under the same name as the business name, then the business name also happens to be a trademark name. For example, XYZ, Inc. is company that manufactures and sells products under the brand names (trademarks) BUZZ, ZIP, and WINK. XYZ, Inc. may register and own the trademarks "BUZZ", "ZIP", and "WINK" for the particular goods they are used in conjunction with. However, XYZ, Inc. cannot register the name "XYZ, Inc." as a trademark if it does not use that name as a brand name of any goods and services.

From a trademark perspective, you want to be concerned with the brand names of similar products and services which are already in use and/or registered as trademarks - regardless of the trademark owner's business entity name. Trademarks need not be registered as prior use gives the owner common law rights to the mark. Trademarks which are only used in one state may be registered in that particular state. Trademarks which are used in 'interstate commerce' (multiple states), may be registered with the United States Patent Trademark Office (USPTO). Registration with the USPTO gives the trademark owner exclusive rights to use their trademark in the entire country, regardless of whether they actually sell in the entire country. In all cases, using 'confusingly similar' trademarks for 'confusingly similar' goods and/or services is infringement of the trademark owner's trademark rights.

For an investigation into use of a particular trademark name, you should retain an experienced trademark attorney. You can obtain a search of common law, state, and federal trademarks from several reputable services, but only an experienced attorney will know how to interpret the results properly.

I hope this information was useful. Good luck to you.

Re: Incorporate & Naming Company question

There is no simple answer to the question, and that's why trademark lawyers are in business. In order to determine whether you are close to infringing, you should have an attorney thoroughly check your use and your logo - BEFORE you start using them. That way if you have to make changes you can do so without worrying about litigation.

The trademarking process is deceptive in its apparent simplicity. In fact it requires substantial research and often considerable negotiation in order to achieve a registration. And, no, registration does not make you bullet proof in litigation - but it is an important defense.

If I can be of help, please let me know. Usually I handle registrations for a flat fee.