Starting a new venture is an exciting and often hectic event. Everything needs to be done at once — telephones, business cards, advertising, leasing space. Time is short and money is even shorter.
You probably chose a name for your business at the start of your venture, but did you confirm that the name is available for your use? Most entrepreneurs don’t, but they should.
Few things are more disruptive to a new business than announcing its name and investing in signage, printed materials and advertising, then later having to change that name. This mistake should be avoided at all costs.
But how can this happen if the Ohio secretary of state says your proposed company name is available? Unfortunately, availability does not necessarily mean your adoption of that name won’t infringe the trademark rights of another. The same phrase that may be available as a corporate name may not be available as a trademark or service mark under which to conduct your business. Here’s why.
* The scope of protection is greater for trademarks than for corporate names. Two corporate names such as “Hamburgers of Akron Inc.” and “Akron Hamburgers and More Inc.” might be different enough in the mind of the secretary of state to constitute two different corporate names, but if consumers are confused and wrongly assume an affiliation between the two entities, then trademark infringement has occurred.
* A corporate name is often not the company’s trademark. A corporate entity may hold itself out to the public under a trademark that is different from its corporate name. The company name is often, but not always, the trademark under which business is done.
Again using the example above, suppose I want to open a business under the corporate name “Emerson Inc.” but I want to operate my business as “Emerson Inc. dba Akron Hamburgers and More.” The Ohio secretary of state will approve my corporate name, “Emerson Inc.,” but the entity “Hamburgers of Akron Inc.” will rightly claim that the use of the trademark “Akron Hamburgers and More” will infringe its trademark rights in “Hamburgers of Akron Inc.”
* Federal trademarks have effect in Ohio, but generally are not registered with the Ohio secretary of state. Some names are already owned by entities not incorporated in Ohio. Therefore, they won’t be found in a search of the Ohio secretary of state’s records.
For example, let’s say there was a chain of restaurants in Arizona and New Mexico called “A. Hamburger and Moore” and that the phrase “A. Hamburger and Moore” is a registered federal trademark. The federal trademark would have effect in Ohio even if the owner of the mark did not currently have a restaurant in Ohio.
Under this example, it is likely that the use of the name “Akron Hamburgers and More” would constitute an infringement of the federal trademark “A. Hamburger and Moore.”
So how can you safely choose a name for your new business? Have an attorney experienced in trademark law conduct a trademark availability search of the proposed corporate name and any other names under which your company might conduct business. The attorney should be able to provide you with a thorough report that indicates whether the proposed names are available.
If they are, adopt and protect them by filing a federal trademark application to ensure that your new entity is free to expand and use the corporate name throughout the United States.
Roger D. Emerson is a partner with the law firm of Brouse McDowell. Reach him at (330) 535-5711 or [email protected].
