Difference Between a Business Name and a Trademark
I often get asked by clients who are starting businesses, “why do I need to trademark my business name? I already look through the Minnesota Secretary of State’s website and no one in the state has my business name.” However, merely clearing a name with the Secretary of State does not mean that the registrant either has trademark protection or is not infringing on someone else’s trademark. The standards for each action are strikingly different.
Choosing a Business Name
When choosing a name it is important to remember to be unique and distinctive and unique. Do you know how many companies have “Minnesota” or “Gopher” in their title? Too many to count since the Secretary of State’s website limits search results to 500. Some great examples of distinctive business names are:
- Asus (The last few letters of “Pegasus”)
- Canon (which originally was named Precision Optical Instruments Laboratory—what a mouth full!)
- Ikea (quite literally just a random collection of letters consisting of the founder’s initials and the property and village where he grew up).
The most important thing about picking a business name, however, is to make sure that someone else is not already using it. This is where some searching on the internet can be very helpful and is a good place to start.
Make sure to not solely rely on a search with the Minnesota Secretary of State. The Secretary of State will allow you to register a name as long as it is even remotely different from another name. For example, if you want to register “Acme Widget Factory USA, Inc.,” you would be able to do so even if there already existed in Minnesota an “Acme Widget Factory, Inc.” and an “Acme Widget Factory Minnesota, Inc.” (Keep in mind, even if you can register “Acme Widget Factor USA, Inc. with the Minnesota Secretary of State, it does not mean that you are not infringing on someone’s trademark rights—which is discussed more below).
Also, try not to have your heart set on one name. People have been creating businesses for a long time, and there are a lot of creative people out there that have come up with a lot of names. It helps to be open to suggestions if your first choice name is unavailable.
Internet Search Done. Now What?
Check to see if there is an available domain name for your business and to be safe, you should also purchase all the related domain names that could be associated with your business. In using our same example above of “Acme Widget Factory USA,” you should buy www.acmewidgetfactoryusa.com, as well as all the similar ones, such as www.acmewidget.com, www.acmewidgetfactory.com or even www.awfusa.com.
You should also conduct a trademark clearance search to see if there are any trademarks, registered or pending, that interfere with your chosen name. If you plan to have that name as your brand, then you should also start using it as part of your business and file what is called an “intent-to-use” trademark. An “intent-to-use” mark means that while you have not used your trade or service mark yet in commerce, you have good faith to do so. By filing an “intent-to-use” mark, you are protecting your mark even though you have not used it yet. Be careful though because you must verify the marks used within six months, and submit a specimen of use to the United States Patent and Trademark Office.
Written by attorney Maureen A. Carlson