I am starting a news business magazine online only called California Business Journal. I already bought the web domain name, calbizjournal.com. I am going to file a ficticious name statement in Orange County for California Business Journal. There is not a publication using that name but there are a slew of business journals like Los Angeles Business Journal and Orange County Business Journal. Can their lawyers come after me and legallly tell me I can't use California Business Journal?
3 Answers from Attorneys
You should have an attorney run a trademark search for you to verify whether the name "California Business Journal" or any similar names have been trademarked.
I would suggest that you work with an attorney in developing your business model and business plan...you may even want to develop strategic partners at the California Business Development Center...
Shawn Jackson ESQ. (707) 584-4529
Business Development Attorney EMAIL: [email protected]
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The filing of a DBA by a person required to file shall establish only a rebuttable presumption that the registrant has the exclusive right to use as a trade name the DBA, as well as any confusingly similar trade name, in the county in which the statement is filed, if the registrant is the first to file such a statement containing the DBA in that county, and is actually engaged in a trade or business utilizing such DBA or a confusingly similar name in that county. The rebuttable presumption created by this section shall be one affecting the burden of producing evidence. In other words, a same or similar business who can satisfactorily prove that it has previously used a same or confusingly similar name in that county may be able to legally stop you from using your name and make you terminate your registrations for that name.
Similarly, the filing of articles of incorporation in the case of a California corporation (or the obtaining of a certificate of qualification in the case of a “foreign” corporation) shall establish only a rebuttable presumption that the corporation has the exclusive right to use as a trade name in California the corporate name set forth in the articles (or certificate), as well as any confusingly similar trade name, if the corporation is the first to have filed the articles (or certificate) containing the corporate name, and is actually engaged in a trade or business utilizing that corporate name or a confusingly similar name. Thus, the filing of articles (or certificate) shall not of itself authorize the use in California of a corporate name in violation of the rights of another under federal or California trademark laws or the California DBA or common law, including rights in a trade name.
So, if there are both a corporation and a DBA registrant using the same or a confusingly similar trade name in a county, and both entitled to the rebuttable presumption, whichever has filed the DBA or filed the articles (or certificate) first in time and is actually engaged in a trade or business utilizing such DBA, corporate, or a confusingly similar name, shall be entitled to the presumption as against the other, that it has the exclusive right to use such DBA, corporate, or confusingly similar name, as a trade name in the county.
It behooves all businesses to determine prior to filing for a DBA whether other same or similar businesses have previously filed for the same or confusingly similar trade name in each county in which they desire to actually engage in a trade or business utilizing that name. Similarly, businesses should determine whether similar businesses have previously filed for the same or a confusingly similar trade name in each county in which they desire to actually engage in a trade or business utilizing that name, prior to filing corporate articles (or certificates) with the same or confusingly similar trade name.
In both cases above, it also behooves all businesses to determine prior to filing for either a DBA or corporate name whether such name would violate the rights (under federal or California trademark laws and the California DBA or common law) of another business in the same or similar business for a trade name actually engaged in a trade or business utilizing such DBA, corporate, or a confusingly similar name, in the county or counties you wish to do same. Wow, what a mouthful.
Failure to perform the above due diligence puts your business at risk of having to cease using your DBA or corporate name in one or more counties in California, or all of California, where other same or similar businesses have previously used or filed for the same or confusingly similar trade name. This will also eliminate in one or more counties, or all of California, any good will associated with your name prior to having to cease use of your name, confuse your business operations with other names you will have to use in substitution for your name, as well as waste your significant investment in the cost, time and effort initially used to file for your name.
Valuable Tip: The use of a truly unique name (such as “Exxon”) hugely simplifies the complications of all of the above issues, including especially the registration of federal trademarks.
Important Proviso: The above material does not constitute legal advice and should not be relied on. It does not create an attorney-client relationship. Each locality has differing laws. A legal matter cannot be satisfactorily resolved without a comprehensive review and analysis of all the unique facts and laws at issue by an able attorney. Your matter may result in a loss of rights if you do not timely retain such an attorney.
Contact: If you would like to discuss this matter further in a more private forum, please feel free to contact me directly at the email address provided through my firm’s website located at http://www.BealBusinessLaw.com