Troy & Schwartz Attorneys-At-Law

Selecting a company name or a name for a new product is no easy task.  Both types of names have the potential to become the company’s valuable intellectual property assets, i.e., valuable brands.  A haphazard name selection process, however, may result in legal problems and/or prevent registration of the name as a trademark or service mark with the United States Patent & Trademark Office.  Clearly the last thing a new startup needs is a legal dispute involving the alleged infringement by its product name or company name of someone else’s registered trademark.   Also, the “wrong” name may well prevent its registration as a trademark or service mark.  Registered marks generally have substantially more value than unregistered marks.

Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, the company’s compliance will generally require it to stop using the mark and transfer any domain name rights, etc.  The upshot?  The company will have to start over in the branding process.

The following tips are intended to get your company off and running with a viable company and/or product name.

1. Do a Google search on the name to see what other companies may already be using the same or a similar name.
2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed company/product name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark or prevent trademark registration issues.  Clearly if you plan to file a trademark registration application for your company/product name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark, generic, or merely descriptive of the goods or services provided under the mark.
4. Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (ABCS) of the registered domain name (ABC) could result in a trademark dispute.   The registration of a dot com domain name in particular could signal potential trademark issues.
5. The best company/product name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
6. Come up with at least three names you like and get the reactions of trusted individuals.
7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the logo creator’s intellectual property rights to your company.
8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.  In the United States, common law trademark rights are recognized.  Additionally, trademark registration requires usage of the mark in interstate commerce at the time of registration.
9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
10. Consult with an intellectual property law attorney up front to avoid costly problems.  A good attorney will discuss potential problems with your proposed names.   A thorough mark knockout search should also be considered.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to intellectual property law including trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company/product name and building your brand could save you some real legal headaches and a lot of money down the road.  

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida  (305) 279-4740

Where Legal Meets Entrepreneurship™

This blog is for informational purposes only and does not constitute legal advice.

© 2023 by Troy & Schwartz, LLC

Picking a company name that meets the above criteria is often easier said than done.   The last thing a new company needs is a legal dispute involving the alleged infringement of someone else’s trademark.  Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, your compliance will generally require you to stop using the mark, transfer any domain name rights, etc.  The upshot?  You’ll have to start over in branding your business.

Here are some tips on getting your company off and running with a viable name.

1. Do a Google search on the name to see what other companies may already using the same or a similar name.
2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark.  Additionally, if you plan to file a trademark registration application for your company name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark.
4. Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (sABC) of the registered domain name (ABC) could result in a trademark dispute.
5. The best company name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
6. Come up with at least three names you like and get the reactions of trusted individuals.
7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the creator’s intellectual property rights to your company.
8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.
9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
10. Consider having an intellectual property law attorney do a professional trademark search.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company name and building your brand could save you some real headaches and a lot of money down the road.  

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida

Where Legal Meets Entrepreneurship™

This blog is for informational purposes only and does not constitute legal advice.

Domain names can be extremely valuable business assets in today’s Internet-connected business world.   During the last two months, we have been contacted by two small businesses which have both encountered the unpleasant surprise of learning that they no longer have control of their domain names.  This blog discusses the steps that every business owner should proactively take to ensure their business is indeed in “charge” of their domain name(s) throughout the company’s existence, until the business no longer wishes to have an Internet presence under the registered domain name, or until the domain name is sold as an asset, e.g., in a business asset sale and transferred to the new owner pursuant to the Registrar’s domain transfer process.

A.    Domain Name Registration by Employees

An employee (“the Registrant”) registered the domain name for her company’s new website through www.godaddy.com (the “Registrar”) in her own name.  Her personal information and not the company’s is listed on the account’s contact details, payment details, and domain name registration details.  Under this scenario, there is no proof that her company has any right to it (aside from the domain itself as a potential trademark).  As the Registrant, she has administrative control over the company’s domain name.  Consider the following scenarios:

1. Her employment is later terminated during a round of layoffs. Feeling her severance package is unfair, she disables the domain name in hopes that the company will pay her for the rights to its domain name.   The company sues the employee for conversion and trademark infringement; or
2. She becomes ill and needs to take an extended leave-of-absence.  During her absence, she misses annually-sent e-mail notification from the Registrar reminding her that the domain name must renewed.  The domain name is not renewed and becomes available for purchase.    The company’s website and associated email addresses are subsequently disabled.

B.  Won’t the Registrar Just Grant Access to the Domain Name or Give the Company a Chance to Renew the Registration of an Expired Domain Name?

Much easier said than done.  Registrars generally require considerable proof before they will allow anyone but the original Registrant to access the domain.  They are not in the process of sorting out domain name disputes and will generally recommend that the parties seek legal advice, work it out among themselves, or use the Uniform Domain Resolution Process (UDRP), an alternative dispute resolution process which every Registrant must agree to as part of the domain registration process.  Scenario B is not a dispute per se but unfortunately can have serious legal complications unless the company is quickly able to secure the domain name rights by repurchasing the name.

C.  What Should a Company Do to Prevent Either of the Above Scenarios from Occurring?

1. Provide clear instructions in the writing to the employee that the organization’s name and contact information are to be listed on the account as the Registrant and not just her name personally.
2. Maintain a copy of the domain name registration confirmation from the Registrar with the company’s business records.
3. Ensure that the email address to access the company’s account is accessible by more than one person at the company rather than one specific person. A departmental or generic, non-person-specific e-mail address is preferable, e.g., [email protected] or [email protected] rather than [email protected].

D.  Website Developer Registration of the Domain Name

Website developers will often register the domain names for the websites they are developing.  Here, it is important to ensure that the website developer uses your company’s contact information as the account contact information.  Remember that the “contact” details help establish true ownership.  The website developer may be listed as the technical contact for the domain name, but that’s as far as it should go to ensure that your company will have primary account access and thereby be able to have a proof of ownership if it ever becomes an issue.

E.   A Final Suggestion

If the Registrar allows the inclusion of multiple e-mail addresses for account login. contact/notification and domain name registration contact, consider including an address not associated with the domain name.  Should your domain go down, e g., if the domain name expires, not only will the website no longer be accessible but no emails associated with that domain name will be received.  A backup e-mail using another domain or free account like G mail may still allow correspondence with clients until other steps can be taken to protect to address the issue.

If you have any questions about protecting your domain name or believe your situation may merit a UDRP proceeding, contact us at 305-279-4740 or complete the “Do I have a case” option at the website.

WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, CONSULT WITH AN ATTORNEY.

©2020

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740