Disbelief, confusion, and an anger that made her whole body shake is how Mary*, a private consultant in Seattle, described the moment she realized someone had stolen her business name.
On the other hand, Brittany*, who has a housecleaning business in Everett, had a slightly different reaction. “I felt both incredibly irritated and flattered at the same time. I had worked for a couple years to develop a brand for myself and so it was an ego boost that what I had was something that other people wanted to have. On the other hand, I was also upset that I was now faced with a choice – rebrand or ask the new business to.”
The fact is, having your business name stolen by another company isn’t just an inconvenience. It can feel like an utter violation. I mean, you just spent years of using your name, building your clients or customers only to have be forced to start over and create a new identity in the market. On top of that, it can also be incredibly disappointing to find that it might not be illegal for someone else to start using your name, forcing you to make serious business changes.
But did you know that you might not have to do any of that?
If another person takes your business name and - even if they change it slightly - if there is a likelihood that consumers will be confused as to what company they are really dealing with, especially when combined with other similarities around the business, such as offering the same or very similar services or goods as you, they can be told to stop using the name or face legal actions. This is called trademark infringement.
What is the Difference Between a Trade Name and A Trademark?
Protecting your business name and saving you from having to change it because someone else is using a similar name has some steps involved. Foremost, it is important to understand the differences between your trade name and a trademark – because they are not the same thing.
Right now, you might be a little confused because you remember that when you registered your business, you were asked by the Secretary of State to also identify and register “trade names”, thus identifying you as the owner of that name and no one else.
You may have also thought that "trademarks" were just any symbols, designs or logos and since you didn't have anything like that, trademarks didn't apply to you.
However, this is a common mistake many small business owners make. That's why the Small Business Administration (SBA) clarifies the difference on their website and defines the two as:
“A trade name is the official name under which a company does business. It is also known as a “doing business as” name, assumed name, or fictitious name. A trade name does not afford any brand name protection or provide you with unlimited rights for the use of that name.
A trademark is used to protect your brand name and can also be associated with your trade name. A trademark can also protect symbols, logos and slogans.”
So, while your trademark can be the same as your trade name, your trade name is not a trademark. But if a business starts to use its trade name to promote its services or products then it’s now acting like a trademark and it could be they might end up infringing on an existing trademark.
Clear as mud, huh?
Because this is confusing for many small business owners, there are other times when infringement is genuinely unintentional – well kinda. For example, a new business owner might have either not done any market research, picked a name out of thin air and unfortunately for you, it’s pretty close to yours. Or, they might know your business, really liked your name and erroneously assumed that if they change a little bit of it or modify it slightly, that their bases are covered. And if they got some extra work from customers not knowing the difference, oh well.
But the fact is that confusing consumers unintentionally or outright stealing from other businesses are both serious deals. And a business who steals or infringes on another businesses trademark can face consequential monetary damages from State and Federal courts if they don’t stop doing it.
how is trademark infringement determined?
The courts and the U.S. Patent and Trademark Office have a variety of metrics they use to determine if a stolen name is a trademark infringement or if a new trademark can be registered. And just like when your high school English teacher busted you for plagiarizing your paper on Shakespeare, just changing a word or two, or the color and style of a logo doesn’t work.
What the USPTO has looked at when deciding if a trademark is able to be registered or protected is if the mark is similar in sound, appearance, and/or meaning to another mark. If it is, then there may be sufficient similarities to support a finding of “likelihood of confusion” with another registered mark and therefore a possible infraction and a rejection of its registration. Further, if the trademark will be used to promote similar goods or services as an already registered mark, it will definitely be denied. That was the case for both Mary and Brittany.
But there are also cases where your trademark simply isn’t unique or unusual enough to warrant any protections of registration or enforcement. The USPTO also has to decide if the mark distinctive and “strong.” This means creative names and designs are good while generic or simply descriptive ones are considered “weak” and unenforceable.
Puget Sound Yacht Cruises = Weak
Boaty McBoatface Adventures= Strong (and amazing by the way)
So, as you are picking your business name for the first time or dealing with a competitor choosing a similar sounding name as yours, you have to consider a few things first.
Does your mark or name have any “fanciful” wording – that is invented words not in the dictionary or have a known meaning? Or is it arbitrary – that is does it contain words that have no association with the goods or services you provide? If so, these are the strongest marks and easiest to protect because by nature they are original.
If your name is simply descriptive and uses generic words that everyone uses to describe their business or product, such as “Great Tasting Bagels” or “Seattle Roses”, then enforcement will be tough.
How to Protect my Business Name From Being Stolen
The obvious first step to protecting you and your business from any infringement or theft of your trademarks and business identity would be to register it with the USPTO. But what if you didn’t and you are in the same position as Mary or Brittany?
The good news is that the lack of registration does not mean you don’t have any intellectual property protection.
You can establish “common law” rights for a mark based solely on use of the mark in commerce, without a registration. What “common law” means is if you didn’t register your trademark but you can prove that you used the trademark in the course of business first, then you are the legal owner of the trademark. Even if your thieving competitor attempts to claim the name after the fact by filing their own registration paperwork, they can’t if you can prove you are the original user.
However, owning a federal trademark registration provides a number of significant advantages over common law rights alone, including the biggest which is to have validation that you own the trademark outright and are completely protected against any infringement anywhere in the U.S.. And it can help protect against foreign companies attempting to market a similar product as yours with a similar mark in the U.S. as well.
But if you don’t want to pay the fees for a Federal trademark registration, which can be a couple hundred dollars, and you are planning on operating your business at a local scale, you can register your trademark at the state level instead.
There are 46 states, including Washington, that have state trademark laws based on the Model State Trademark Bill. It is intended to provide trademark protections within the State or region and does not have the same broad nationwide or international level of protection that a trademark registered with the USPTO would but it’s way better than not doing it at all and it’s significantly less expensive.
So, if you do register your trademark with the USPTO and it’s approved, you will have the right to add the superscript ® to your trademark and show that it is federally registered and protected and should have your competitors reconsidering the idea of snatching your trademark.
However, if you haven’t registered your mark, you can still use the ™ for a mark used with goods or "SM" to your mark if you provide services. This indicates that you have adopted your business name or tagline as a trade or service mark. If you have this symbol with your business name online, on your business cards and your marketing materials that are circulating out in public this helps with establishing the common law.
Again – if you haven’t been using the symbols up until now - don't freak out - you haven’t lost your ability to enforce your trademark. It might just be a little harder.
When all is said and done, having a mark registered does not mean your work is finished. You now have to be diligent about enforcing it. That is, if you found that someone infringed or imitated your registered trademark, then you have to tell them by sending them a notice to quit. If you aren’t willing to protect your trademark, then you might as well not worry about registering it because the gist is if you don’t care, then the courts don’t care either. And if you haven't taken actions when you've seen violations, you actually lose the protection of enforcement altogether. This means you can't pick & choose who you send notices to and who you don't.
It doesn't mean, however, that you have to spend time researching and making sure no one has taken your name. It simply means if you have been made aware of a violation, you did something. Like Mary, for example. She was online at a directory website, updating her business profile, when she saw the name of another consulting agency in Seattle with a new profile that was nearly the same as hers.
Sending a notice is easy. If you have a lawyer, great – get them on it. But if you don’t, you can consider using something like Rocket Lawyer’s Trademark Violation letter. You can edit it and send out via certified mail to any business you feel has stolen your trademark or has a trademark that is confusingly close to yours and ask them to stop. This puts them on notice and it shows the courts, should it get to that point, you've claimed your name as your trademark and it’s important to you and your business to protect it.
The real costs of going through a name change are not trivial, especially to a small business. But the unknown losses in revenue due to the confusion by your clients and customers can be heartbreaking so you want to make sure you do what’s necessary to protect your assets.
What to Do When You Have to Change Your Business Name
If a business is stuck in a grey area between strong infringement enforcement rights and a weak trademark, they are faced with continuing on with their original name or changing.
As both Mary and Brittany both found out, the work in changing their business names was a huge hassle. Both women had their small business names stolen by competitors who were also working in the same fields as them so there was not only the work of a name change, but also make potential customers and peers in the industry aware of the revision and the distinction between their old business names and the competitor. While Brittany had her own housekeeping business for only a couple of years, Mary was far more established in her field of consulting and the impacts were far-reaching.
“Having to re-brand was a tough transition. I was well established with my old name and still find I have to still use it when networking for people to take me seriously. My emails didn't forward for a few days to my new website and domain, so I can only imagine there is some lost revenue from leads and inquiries I didn’t get not to mention people contacting the other business thinking it’s me,” explains Mary.
Both women had to change their names, develop new logos, update their websites, buy new domains, update profiles on third-party directory/referral sites such as Yelp and then also notify the banks, state and federal agencies. Sometimes, if during the process the business structure changes, as Brittany did during her re-brand, you may have to apply for new a new EIN.
Once the crummy work was done, both women then relied heavily on social media to get the word out. “I ran paid ad campaigns for all social media platforms and sent an email to all of my contact list to let them know the change. I also added a tag in my email signature to help let people know as we were emailing” said Brittany.
The Happy Ending
Perhaps Mary and Brittany may have been able to save themselves from having to go through the efforts of re-branding their businesses by confronting the other business owners, but they both decided against it.
While reluctant to do so at first, Mary found that by changing her name after years of using the old name, she was able to pick something that actually fit her branded identity much better which had naturally evolved over the years.
Brittany had a similar feeling and approach as well. “I completely rebranded. And you know what, I am so happy I did. It made me realize how much of my brand wasn’t fleshed out in the first place. When forced to think about I realized that it no longer presented my identity as a business owner and operator, and that it didn’t offer me space for growth.”
The moral of the story is doing research on your name is pretty important but so is taking the steps to protect it because a business without a name is like a book without a title. It may be the most important asset you have.
*Names & businesses were changed to protect all parties involved.
The US Patent and Trademark Office has a useful guide on understanding the Federal intellectual property protection laws. (https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf)
Ameé Quiriconi | ACTIVITY GIRL, LLC is not a legal firm nor represents itself to be an authority on law. This article is written to be informative and to provide the reader with an introductory level and understanding of trademark violations. If you believe that you are the victim of trademark infringement, then I encourage you to find an attorney that specializes in those matters and discuss your case further with them.