What If My Business or Product Name is Already Being Used?

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• Trademarks and Willful Infringement

So you’ve decided to take the plunge and start your own small business. Congratulations! One of the first decisions you will need to make is the company name, product or service. Thinking of the perfect name is often the most challenging part of the business startup process. And even after you decide on a name, that is just the first step in the process. The next step is to make sure that nobody else has the legal right to use your chosen business or product name. Specifically, there are two questions you need to research the answer to:

1. Is your name already registered by another business with the Commonwealth of Pennsylvania?
2. Is your name already protected by a federal trademark?

If, when you look around, you find someone else is using the name, Manny Pokotilow, a trademark litigator at Caesar Rivise in Philadelphia, has two pieces of advice: “If you just started or intend to start using a name, you’d be better off finding a new name and mark. If you’ve been using the mark already, you have a decision to make. You can continue using it, but it is possible that the competitor who used it first may come into your area and will have to stop you. That’s happened to a number of clients I’ve had,” he says. The Pennsylvania Secretary of State is responsible for handling business name or trademark registrations. Generally, you are required to register any “fictitious name” used in connection with a Pennsylvania business. Note that not all business names are considered fictitious names. For example, say Jane Smith opens a computer repair business and calls it “Smith Computer Repair.” This is not considered a fictitious name because the business name only contains Jane’s last name and a description of the business entity. But if she called her business “Computer Repair Services of Philadelphia,” that would need to be registered as a fictitious name. “Some marks that are being used can’t even be protected,” Pokotilow adds. “The reason is that they are descriptive of the particular goods or services, or they’re too generic. There are all types of different things that could happen.”

Trademarks and Willful Infringement

Many fictitious names and trademarks can be registered and enforced at the federal level under the unfair competition statute. A registered trademark (or service mark) is any combination of words, phrases, symbols, or designs that identify a particular product or service, respectively.  Once properly registered with the U.S. Patent and Trademark Office (USPTO), a trademark becomes the  presumptive legal property of the holder. In other words, say our hypothetical Jane Smith decided to call her business “Apple Computer Services” because she really likes to eat apples. Obviously, this would infringe on the trademark of another well-known computer company. This company could not only stop Jane from using that name, it could also sue her for “willful infringement” of its trademark and recover damages in court. Note that willful infringement does not mean you intended to use someone else’s business name that already exists. If you simply pick a name and never bother to do a name search to check if it is under trademark protection, you can still be held liable for trademark infringement. As is often the case with the law, ignorance is no excuse. “There are so many different situations,” Pokotilow says. “Is the business owner using the name on the same goods or services as the other company? Is it being done in a different part of the country and there’s no U.S. registration? If it’s only being used locally, the business owner may be able to continue to use the same mark and wouldn’t infringe on someone who’s also using it locally in a different area. If the competitor’s name is used nationally and has a registration that preceded your first use, the client wouldn’t be able to use it.” If it’s a situation of similarity and not exact same names, the question becomes whether there’s potential for confusion. Contact a law firm and seek legal advice. “There is nothing you need an attorney more than for trademark because of all the variations,” Pokotilow adds. “As soon as you have an idea for a business and you intend to use any name, you should check with a trademark attorney.” For more information on this area of law, see our overviews of intellectual property and trademarks.