I have two situations with my company name. One is trademark, the other is the company name itself.
1. I trying to name my company WEBSITEAGENCY but I found out that there's a company with registered trademarks for WEBSITEAGENCYWORKS INC (standard character mark) and WEBSITEAGENCYWORKS (a logo) that has the same services as I do.
* Is the trademark close enough to my new company name to have any issues?
2. In my state there is a company named WEBSITE INC, I'm trying to rename my company to WEBSITE LLC.
* Will I have an issue in registering the new name?
* If so, will I have an issue registering a DBA, Company?
2 Answers from Attorneys
Regards to #1: yes, in all likelihood this is too close. But these kinds of questions cannot be addressed in the hypothetical.
Regards to #2: Yes, it will be a issue and you will have to file the DBA, but you should really proper clear the name if you plan on using it as a trademark for branding purposes.
Before you invest in any trademark make sure you get some legal guidance upfront. 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 NY 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.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. 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 consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
Our firm is now referred by the American Bar Association (see under the New York section): http://www.americanbar.org/groups/delivery_legal_services/resources/programs_to_help_those_with_moderate_income.html
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.
Both excellent questions that many business owners struggle with.
Concerning the trademark issue additional information is needed to asses the likelihood of confusion in the marketplace and therefore the likelihood of infringement.
As far as registering an LLC with the same name as a corporation, generally the answer is yes but it brings an entire bucket of potential issues with it, so do caution and understanding of the risks is highly advised.
Based on your questions I think you ought to consider a consultation with a startup attorney as you are trying to address sophisticated issues without the proper understanding of the the potential consequences.
I offer LawGuru users a discounted flat fee consultation fee where I will review your desired trademark and the existing one as well as your desired company name and return a recommendation.
Please click here: Flat Fee Review
Roman R. Fichman, Esq.
Disclaimer: This post has been written for educational purposes only and was not meant to be legal advice and should not be construed as legal advice or be relied upon. No intention exists to create an attorney-client relationship or any other special relationship or privilege through this post. The post may contain errors, inaccuracies and/or omissions. You should always consult an attorney admitted to practice in your jurisdiction for specific advice. This post may be deemed as Attorney Advertising.
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