Hi I would like to register a business name in California called "bizwork" but the name is already registered, however I really need want to use this name some how in my business name. I was wondering if I can use name like "bizworks" or "Biz work" or additional word like "bizwork international". If those are not advised, I would also like to ask if I can consider registering it another state. Thank you
1 Answer from Attorneys
Getting around the state database can be as easy as filing a DBA, but this does not help you if you are infringing on another's trademark. If you are seeking to grow a brand then you need to approach this from a trademark perspective and not merely as a business name. Also, a name like "bizwork" will be considered highly descriptive and not very strong for trademark purposes.
It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.).
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
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