The law recognizes two kinds of property: tangible and intellectual property. Tangible property includes real property (e.g., homes, land) and persona property (e.g., cash, jewelry, furniture). Tangible property is real; it can be seen and touched. Intangible property consists of the mind’s intangible creations. In the United States, the four main types of intellectual property are trademarks, patents, trade secrets, and copyrights. These all are created by individual mental effort and thought.
A trademark is a word, a series of words, a symbol, and/or a logo. Businesses can register trademarks with the United States Patent and Trade Office (USPTO). If the USPTO approves the registration application, the person filing it (registrant) gains specific legal rights. These rights include the right to sue for infringement of, or copying of, the trademark. Trademarking a business name can help in protecting a brand name.
Official registration with the USPTO is not necessarily required. In many instances, if neither you nor a competitor have registered a trademark, the law settles an infringement dispute by looking which business was the first to use the name.
How Do I Find Out if Another Business is Using My Name?
Imagine you own a small business. The business’ name is “Pies in the Sky,” and sells baking ingredients. You want to make sure that no one else is using this name. There are two ways of doing this. The first is to conduct a trademark search with your state’s Secretary of State. Secretaries of State maintain websites that can be searched for business names.
By conducting the search, you can find out if another business in your state is using your business’s name. This search can be conducted at no cost. Once you have conducted this search, you can conduct a search of the trademark database maintained by the USPTO. This search will reveal if another business has trademarked your business’s name. This search is also free.
If you discover, through both of these searches, that no one else is using your business name, you can do two things. First, you can register the business name with your Secretary of State. This registration involves filling out an application, which asks for questions such as business purpose, type of business, state of incorporation, and business contact information.
Registration of your name puts the world “on notice” that you are using the name in connection with your business. You can then apply for registration of the trademark with the USPTO. If you have a logo or symbol that is part of the business name, you can include pictures of the logo or symbol as part of the application. This ensures that the entire trademark – name and surrounding images – is registered.
Registering with the USPTO is not required. However, there are several advantages to doing so. Registration creates a presumption that you have a claim of ownership to the name, and that you have the exclusive (sole) right to use the name in connection with the products you sell.
What Should I Do if Another Business is Claiming to Have Used My Business Name First?
Many businesses do not register trademarks with the USPTO, usually because they do not wish to pay a fee. Imagine a situation where you have not registered the name. You discover that another business, which also did not register, is using the same name. Can you do anything to stop that business from using the name? Under the law, when there has not been registration, a small business can show that it has superior rights to the name, as against someone using the same name.
The small business can make this showing by proving it used the name in commerce first. To make sure nobody steals your business name, you should document use of the name. You can do this by keeping records of the name being used in commercial activity. Advertisements, products bearing the name, “claiming” the name on websites such as google, are all evidence that you have and are using the name. Your records should include dates, such as dates of print and radio ads, dates merchandise with the name was shipped, and so forth.
Can I Sue Someone for Using My Business Name?
If you discover that another business or person is using your business name, you can file a civil lawsuit against that business or person. In the lawsuit, you must show that you have used the trademark in commerce. You must then show that the defendant’s use of a similar or identical trademark infringes upon your trademark rights. To do this, you must show that if the defendant continues to use the trademark, an appreciable (fair) number of consumers are likely to be confused.
To demonstrate confusion, you can show that there is a likelihood that consumers are or will be confused as to whether the defendant’s product or service is associated with you or your product or service. You can also demonstrate confusion by showing that consumers will likely be confused as to which company, the defendant’s or yours, the defendant’s goods originated with.
You need not demonstrate that consumers actually are or have been confused. You need only demonstrate that the defendant’s infringing trademark is sufficiently similar to yours, that confusion is likely to result. The more similar the defendant’s business is to yours, and the more the defendant’s trademark resembles yours, in name, appearance, and logo, the more likely consumers will be confused.
What Relief Is Available to Me if Someone Else is Using My Business Name?
A plaintiff can file their civil lawsuit under a federal law known as the Lanham Act. If a plaintiff is successful, the plaintiff is entitled to several potential remedies. One of these remedies is injunctive relief. Injunctive relief consists of the court issuing an order, prohibiting the defendant from further infringement. The order requires that the defendant stop using the name in a way that creates a likelihood of confusion.
A court may also award money damages to a plaintiff. Money damages compensate a plaintiff for a defendant’s wrongdoing. Money damages in trademark infringement cases are often difficult to prove. Therefore, a court may order the defendant to produce an accounting of profits. This is a financial disclosure by the defendant. An expert witness can evaluate the disclosure, to determine whether the defendant profited off the infringement and the amount of unlawful profit.
Sometimes, a defendant infringes on a trademark by counterfeiting it. Counterfeiting occurs when a defendant deliberately uses a plaintiff’s trademark on its own goods and services. Counterfeit items, which are represented as the “real thing,” are in fact “fake,” and often of inferior quality. If a defendant intentionally uses a known counterfeit trademark, a plaintiff can sue the defendant. Under the Lanham Act, the plaintiff can recover three times the actual damages the plaintiff has demonstrated. This recovery is known as “treble damages.”
Do I Need a Lawyer if Someone Else is Using My Business Name?
If you want to protect your business name and prevent others from stealing it, you should contact a business lawyer. An experienced business lawyer near you can help secure the business name by advising you as to how to register the trademark, what to do to ensure you do not lose trademark rights, and by representing you in court.