In this video, you get answers to these questions:
Can I pick a business name if a similar name already exists? That’s the question I’m going to answer today. I’m Aaron Hall. You can learn more about me at aaronhall.com. Please see the disclaimer below this video.
When you are starting a new business, you’re thinking about what can the name be, and often you go to your state business registration website. In Minnesota, it’s the Secretary of State. And you check out to see what names are available. Well, you might find a name that is very similar, but it’s not exactly the same, and the Secretary of State or your state agency doesn’t object to you using it. Well, there are two considerations when picking a business name. The first consideration is it has to at least be one character different as far as a state registration is concerned. That’s not a big deal. Typically, you can figure that out fairly easily.
The second consideration is trademark law, and the legal test there is is the name you intend to use confusingly similar to somebody else in your industry or space. There’s a similar test for really big brands, and that is, could somebody think you are somehow affiliated with them? Mercedes is a great example. If you came out with a restaurant called Mercedes Hamburgers, the Mercedes car company could object because this is under trademark dilution doctrine. People might think, “Well, I wonder if the Mercedes Hamburger restaurant is related to the Mercedes car maker?” Or people might think, “Ah, I no longer think Mercedes is really high quality because I’ve had those hamburgers.” It starts to lower their brand recognition or their impression of the Mercedes car brand in their minds. That’s all under trademark dilution.
Back to trademark infringement. If a name is confusingly similar in your industry or space, then you’re not going to be able to use it. It will be considered trademark infringement. You might be wondering what is confusingly similar? Who decides that? Well, it’s considered a finding of fact. In other words, a jury, if there’s a jury in a trial, would be considering that. Or, if you don’t have a jury and you have a judge, the judge would decide is it confusingly similar? And so typically when I’ve litigated cases like this if I’m trying to demonstrate that it is confusingly similar, I will ask my client who is arguing that somebody else’s brand is similar, I’ll say “Client, keep a log of all the calls from customers you get where they’re confused about whether you are yourself or this other company that’s using a similar name.” So, that’s one example of how you can establish evidence that customers are actually confusing two separate companies.
So, when looking at naming a business, you want to pick a business name that is not already in use and confusingly similar with a competitor out there or somebody that might be related. Now, I once had a client who wanted to do a superhero with an animal name. I’m just going to say frog, that isn’t it, but for this example when we said frogman and tried to register that, a detergent company who uses this animal as their mascot basically initiate an office action, filed a dispute, and they said, “Look, that’s creating confusion in the marketplace.”
Our response naturally would be a frog comic book hero is so far removed from the industry of cleaning clothes, and I think we are very likely to win that. However, it would have required essentially a trial or an office action with the U.S. Patent and Trademark Office, and so there may be a cost associated with prevailing. Even when there isn’t really confusion, you have to prove there is no confusion in the marketplace. So, when picking a name, the best practice is pick one that is not confusingly similar to somebody already in the marketplace. To learn more, check out the other videos here or visit aaronhall.com.
To learn more visit my website at aaronhall.com