Question

Topic: Branding

Trade Name Conflicts And Consequences?

Posted byBilld724on4/12/2005 at 6:39 PM ET 250 Points
I have a client with a legitimate (i.e. unique and registered) trade name for her business in the state where her business is located.

Recently, she has been generating sales from people in other states where she has not previously done business. Her website and favorable word-of-mouth have been responsible for these sales.

A friend (not her legal counsel) suggested she ascertain if any other businesses are using the same tradename as she is because they might be able to challenge her ability to do business in their state/s.

I see the issue and am seeking answers to four questions:

1. What's the BEST way to find out if any out-of-state firms are already using the same trade name as my client?

2. What's the MOST PRACTICAL way to do this . . . balancing research time, costs and possible downstream risks?

3. If she owns a URL based on "www.(her)tradename.com" (she does) and another out-of-state company is using that same tradename in their own state, can they sue to have her remove her website or cease using her current URL because, technically, prospects in the other company's state might find my client on the Internet and then do business with her?

4. What issues -- or questions -- should my client be seeking to address, formally, with her attorney? Should that be any specialized kind of attorney?

OK, I know this sounds like a law school 'bonus question'. I'm no lawyer but I would like to give my client and friend a 'damned good guess' on what she should do now. She's built up quite a good reputation in her home state and, as she's beginning to attract customers from around the country, she (and I) would hate to lose the marketing momentum that she's worked so hard to enjoy.

Any ideas, thoughts or insights . . . bring'm on!

Thank you.
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RESPONSES

  • Posted byBilld724on4/14/2005 at 10:20 AM Author
    Tom --
    You may not be an attorney, but you are a great believer in them! ;-) Excellent advice you've given -- this is not an issue for any kind of an amateur attempt to discern or resolve. Time for the 'pros'!

    Jerry --
    Also excellent insights (why am I acting surprised?) and the URL issue is one that appears safe -- at least for the moment.

    What she's been told, by an attorney specializing in Intellectual Property is that the mere 'use' of her tradename, even if not technically and formally 'registered' (she didn't do this federally yet, either) could still be problematic for her in the state/s where that name has been in usepriorto her using it in an equally public fashion.

    Similar to a copyright, merely 'claiming' it or 'using' it, even if not formally registered, seems to provide some rights to the use of that tradename and some recourse (albeit, limited!) against any challenges.

    The best thing, if the name is worth having, is to formally and fully protect it with full federal registration. At least that's the story she's been given so far. Makes sense to me, too.

    I shared your input with her. And, just so you both know, you were each instrumental in getting her to consult with that IP attorney! You've done your 'good deed' for the day. '-)

    If you want me to update you on the ultimate outcome / discoveries, I'll be happy to oblige.

    Again, thank you both for your prompt and insightful input.

    Cordially,

    Bill
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