Trademark Considerations in Choosing a Corporate Name

After you've completed the process of determining whether your desired corporate name is available for use in your state, another set of considerations also comes into play — trademark, trade name, and service mark considerations. Domain name issues are discussed separately below.

A Secretary

of State's permission for using a corporate name is fairly narrow. It's merely a finding that the name is not the same as, does not conflict with, and is not confusingly similar to any other corporate name registered in that state. Incorporating your company in whichever state you choose does not give trademark protection for your company name. The permission does not necessarily mean that you'll have the legal right to use that name, because federal and state trademark laws may have granted prior rights in your chosen corporate name to a third party, which may ultimately be able to prevent your corporation from using the name, even if the name is available according to your state's Secretary of State.

Key Terms Defined

• Trademark. Any word, symbol, design, slogan, or combination that identifies and distinguishes goods.
• Trade name. The name of a business or company, generally not protectible as a trademark unless used to identify and distinguish goods or services.
• Service mark. A mark used in the sale or advertising of services to identify and distinguish services performed for the benefit of others.
• Distinction between trademark and service mark. The main difference between a trademark and a service mark is whether the mark is used with goods or services. Goods commonly have labels, and services have no place to attach a label. For most other legal purposes, trademarks and service marks are treated equally.

The most important right a trademark, trade name, or service mark owner possesses is to prevent others from trading on the owner's goodwill by confusing or deceiving third parties into purchasing a product or service through the use of a similar trademark or service mark. It's important to determine if anyone else has already trademarked the name you have selected for your corporation, particularly since you'll also be selecting your corporation's domain name.

Additional information on trademarks and domain names may be found on the official Web site of the United States Patent and Trademark Office and on AllBusiness.com.

State Trademark Search

A state trademark is one that has been registered at the state level. State trademarks must be searched at a state trademark register. The method for searching state-registered trademarks will vary from state to state. Some states will do an "unofficial" search by phone, for free. Other states require that trademark search requests be submitted by mail, and will charge a fee.

Information regarding state trademarks and searches is typically handled by the Secretary of State. For a handy state-by-state directory to all Secretary of State offices, see Secretary of State Information for Incorporating in All States.

Common Law Search

Trademark ownership is based on who uses the mark first. Because of this, you should check unregistered as well as registered marks to avoid possible future conflicts. Unregistered trademarks can be more difficult to find because of their very nature. A trademark that has not been registered with the state or federal government is a common law trademark. Common law trademarks are at a distinct disadvantage compared to federal or state registered trademarks.

The reason you are engaging in what seems to be an amazing amount of searches regarding the name for your corporation is that not only are you searching to determine whether the name is already in use by another corporation in your chosen state, but you're also searching to determine whether the name has been trademarked, either by common law or by federal trademark registration, which may prevent you from using your chosen name.

Good news. If you have already searched one or more Internet search engines and looked in telephone directories for your desired corporate name, you have already completed a portion of the common law search.

• Public libraries. Public libraries are an excellent resource for all types of directories and registries, and are free. One directory commonly found in libraries is ReferenceUSA, which contains 12 million business names and is searchable by any keyword in the name, as well as by industry and location. Directories of manufacturers, wholesalers, retailers, organized by state or country, may also be available for review at public libraries.
• Directories and registries. Two well-known resources for business information are D&B's Business Directory and the Thomas Register, both of which provide online access to their information. There will be fees for using these services, which you may be able avoid by using them in some public libraries.

Trademark Search Online

A very basic federal trademark search can be conducted online at the United States Patent and Trademark Office's official Web site. To get to the trademark section of the Web site, click on "TRADEMARKS" on the left of the screen when the first page opens. Once in the Trademark section, on the top left is a section called, "SERVICES." The top selection in that section is "SEARCH trademarks." Clink on that and follow the instructions to do your very basic trademark search. If the name you enter comes up instantly in the USPTO's trademark database, you should find another name for your corporation. If your chosen name comes up instantly, try searching the name with variations to see if something else is available, or try a completely different name.

Trademark Search Companies

If you haven't yet reached a satisfactory conclusion as to whether your chosen name is available, and wish to conduct a more detailed search, the next step is to use a commercial service. This type of service will search a number of trade name, trademark, and service mark registries, and compile a detailed list of similar names and/or marks. The cost and time required for trademark-related searches will vary depending upon the complexity of your request. The search results are not easily understandable, and should be carefully examined by an expert in this area. It's a good idea to hire an attorney to interpret the search results, and it may be best to hire an attorney to conduct the search itself. Be sure to read Do I Need an Attorney to File a Trademark Application?

Probably the best-known and oldest trademark search company is Thomson CompuMark, 500 Victory Road, North Quincy, Massachusetts 02171, (800) 692-8833. This firm provides an entire range of trademark services, including trademark search. Other trademark search companies can be found by visiting your favorite search engine and entering the term "trademark search company."