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Summertime is here. Time for road trips and car games. My kids like to play the name game in full "banana-fana" glory. So, what's in a name? We talk about names all day long, but there are very different rights that arise from particular kinds of names. In the trademark realm, we are often asked to sort out the differences between the registration of a trademark, business name and domain name. Do you know the difference?
Names are powerful. One of my favorite introductions is from the Rob Reiner movie The Princess Bride. A skilled swordsman named Inigo Montoya, played by Mandy Patinkin, spends his life trying to avenge his father's death. As he finally duels with the six-fingered man, Inigo Montoya says his name over and over as a mantra with increasing strength and fortitude. [As an aside, much could be said about the female heroine's name, "Buttercup," but that's for another day. No offense if you have been given that unfortunate name.]
The name of your business or product brand name can serve three purposes as your trademark, domain name, and business name. Registration in these three contexts, however, is different, and all three should be considered when choosing a "name."
BUSINESS NAME REGISTRATION
When you start a business, you create your entity through a registration with a state's office of the Secretary of State. The state will confirm that no one else in that state has the exact same business name. Tiny differences or single letter variants are often enough to differentiate between your business name and the next guy. And, only business names already registered in that same state are checked. This is a very minimal standard. Thus, if there is a Jen Kovalcik, Inc., registered to do business in California, a different company can usually register to do business in an adjoining state with the exact same name. Typically, the clerk checking the business name directory does not check databases for trademark registrations or business names registered in any other state. Therefore, the fact that you are allowed to register a particular business name does not guarantee that you will have the right to use that business name. To fully clear a new name, you also have to consider whether anyone else has prior rights to use the name as a trademark.
Trademark rights are established by use of a mark as a source identifier for your products or services. While registration is not required, it is highly recommended for several reasons. In addition to other benefits, a federal trademark registration gives you the presumptive right to the exclusive use of your trademark throughout the entire United States. A registration also serves as public notice that you have rights to the mark, and it allows others to find (and hopefully avoid) you if they are running a search to choose a new name. A trademark has a broader scope of protection than a business name, and neither exact duplication nor tiny differences are permitted. Trademarks not only have to be different; they have to be distinctive so that consumers can tell the difference between you and the next guy without being confused.
Much like business name registrations, domain names can be registered if they are not already taken and only have to be minimally different. No other clearance is performed. Therefore, the fact that you are allowed to register a domain name does not guarantee you are allowed to use that domain name with your products or services. Again, we look to trademarks to determine whether it is OK to use a particular domain name. Obviously, no real trademark rights are associated with the generic part of a domain name like www. or .com. The main portion of a domain name usually is also your trademark. To avoid receiving a cease and desist letter, you need to make sure no one else has trademark rights to the domain name before you launch.
Your name is important and can be one of your most valuable business assets. Nissan just signed a multi-million dollar deal for the naming rights to the Tennessee Titans' stadium. This follows the naming of Levis Stadium, which also paid millions of dollars for the rights to the San Francisco 49ers stadium - the site of the 2016 Super Bowl, and for which Levis applied to register the trademark Field of Jeansâ¢. If you are curious what it might cost to name a sportsplex after you, check out ESPN's website. If you don't have an extra million or two lying around, then combining the protections of trademark registrations, business name registrations, and domain name registrations is your best move offensively and defensively.