Tradenames - New Business or New Products

When starting a new business or launching a new product, one of the many components that requires special consideration is selecting a name for the business or product.  In addition to the marketing considerations and personal preferences that weigh heavy in choosing a name, business people should also consider statutory requirements and the intellectual property rights of themselves and others when choosing a name.

Before selecting a business or product name, it is important to consider whether the proposed name might infringe on the trademark rights of another person or entity.  One of the primary goals of trademark law is to protect consumers by ensuring trademarks are helpful in identifying the source of goods or services. Thus, trademark law seeks to prevent the use of confusingly similar marks in commerce that might cause consumer confusion as to the origin or producer of a good or service.  Trademark law protects marks used in commerce and provides especially broad legal protection for well known, famous marks, preventing confusingly similar marks from being used on products even if the products differ greatly from those of the famous mark holder. As a result, business people must consider existing trademarks, registered and nonregistered, to minimize the likelihood of confusion with existing marks.

Business people might also consider whether federally registering their proposed business or product name with the United States Patent and Trademark Office is prudent.  Registration is not required to obtain trademark rights, namely the exclusive right to use a mark in commerce. Registration does, however, establish priority and provide notice to other businesses and individuals of the mark’s use in commerce.  Registration can also establish a rebuttable presumption that the mark is incontestable, and allows the use of the ® symbol denoting federal registration.

While federal trademark registration is not required, California law requires any person doing business for profit under a name other than their own to file a fictitious business name statement in the county where the business’s principal place of business is located.  This statement must be submitted with a filing fee, published in a local paper, and renewed prior to the date of expiration 5 years after its initial filing. This requirement not only puts the public on notice of who is serving as an officer or owner is operating the business, but may also provides protection for the business itself. A properly filed fictitious business name statement can provide the filer with the exclusive right to use that and other confusingly similar business names within the county of filing, assuming among other things, that the name does not infringe existing marks and that the business was the first to properly file such a statement.

Analyzing a proposed business or product name before using it in commerce and filing a fictitious business name statement when required are important steps in opening a new business or launching a new product.  Taking the time to do so can help protect good will associated with a business or product and can avoid cease and desist letters or costly infringement suits down the road.  If you have questions when preparing to open your own new business or launch a new product, please contact Janssen Malloy LLP to meet with a Humboldt County lawyer experienced in assisting new and developing businesses.