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  1. #1
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    Question Choosing a Business Name With a Possible Conflict

    Hello Forum,

    I've run a small IT consulting firm in Northern Virginia for the past 11 years. I've never been completely satisfied with our business name, or the fact that we've been unable to procure a suitable .com domain.

    I recently purchased a .com domain from a private party and am in the process of changing our business name. For sake of explanations, I'll call it Company Two. So far I've successfully filed as an LLC in Virginia under the new name, and I've applied to Trademark the Company Two name.

    During the LLC registration process, I realized there was a business in Virginia operating under the Company Two name. All their marketing and web site efforts are done under this name that I've just registered. They are incorporated under a different name, but use Company Two for everything.

    I will be putting a lot of money into marketing our new name and don't want to confuse my prospective customers with the existence of this other company. They've been around for over a decade, however, I feel that I'm taking all the action now to preserve my business naming rights, that they should have done long ago.

    I'd like to know if I can force them to eventually change their business name, assuming my Trademark comes through. Thanks!

  2. #2
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    Default Re: Choosing a Business Name With a Possible Conflict

    Quote Quoting C4talyst
    I'd like to know if I can force them to eventually change their business name, assuming my Trademark comes through. Thanks!
    Very likely not.

    If your application to register "Company Two" comes through, it would be because you convinced the U.S. Patent and Trademark Office (PTO) that your advertising efforts have saturated your target market enough so that most people in that market associate "Company Two" with your company or its products.

    If the existing Company Two already competes in your target mark enough so that your claim is not actually true, then that existing Company Two can apply to the PTO to de-register the "Company Two" trademark, so that you would not have a registered trademark. They might even be able to submit enough evidence to the PTO to convince the PTO that they deserve to have "Company Two" as their registered trademark.

  3. #3
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    Default Re: Choosing a Business Name With a Possible Conflict

    I own an "S Corp" for over 10 years that I done IT consulting on and off. I don't make enough on it to make it worth my while to "tradmark" it, but the company bank accounts are all in the S Corp name as well as another DBA which my wife used to do an unrelated business, but also operate through this corporate shell.

    Based on what you said, it appears the company used a "corporate shell", plus a DBA to conduct it's business through. It is your responsibilty to make sure that the name you chose does not conflict with any others out there, and if they were around for 10 years, actively use it, they don't have to "trademark it" to make sure someone else comes in and snatch the name away.

    Beleive me, I looked into it, and I've been advised I don't have to trademake my name so any time someone decides they like my business name, trademark it, I have to go and re-organize.

  4. #4
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    Default Re: Choosing a Business Name With a Possible Conflict

    Quote Quoting SChinFChin
    Based on what you said, it appears the company used a "corporate shell", plus a DBA to conduct it's business through.
    Based on what C4talyst said, it does not appear the company used a "corporate shell".

    A company is under absolutely no compulsion to have the corporate name or accounts match a trademark. For example, Adobe Systems Incorporated has registered the trademark "Photoshop" as referring to their superb photo- and image-editing software; there is absolutely nothing wrong with that. This principle should not be surprising, since companies (large or small) may register many different trademarks.

  5. #5
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    Default Re: Choosing a Business Name With a Possible Conflict

    There are common law rights to business names. You also better check to see if they have a state trademark. Your business, from your description, does not even qualify for a federal trademark. A U.S. trademark must be used in INTERSTATE commerce. Even if you get it, it will be subject to attack. I strongly suggest that you come up with a different business name. Try to be original.

  6. #6
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    Default Re: Choosing a Business Name With a Possible Conflict

    You don't have to register in order to get protection, it just helps a lot.
    The first question I'd ask is what's your product/service and what's theirs?
    The key to trademark is that the name lets people know who made the product. Are people going to see Company Two and think the other guy made your product? If so then he can stop you from using Company Two.

    So, they have the name, they've been using it for a decade. You come along and try to start using the name. Sounds like they have priority rights to it if there is a conflict.

  7. #7
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    Default Re: Choosing a Business Name With a Possible Conflict

    Quote Quoting LyonLegal
    Sounds like they have priority rights to it if there is a conflict.
    Not so. A conflict over a particular trademark is resolved by convincing the court that more people in the targeted market associate the trademark with your products, services, or company than with your competitor. The standard is a preponderance of evidence

    If one company has registered the trademark, that creates a presumption that more people in the targeted marked associate the trademark with your products, etc.. That presumption may be rebutted.

    There are some exceptions. For example, if "Billy Rose" is a registered trademark for a large business, someone named Billy Rose could operate "Billy Rose Flowers" without violating the trademark, though if everyone knew him as "Bill Rose", he could be forced to change the name of his business to "Bill Rose Flowers".

    Trademarks are not like patents. With patents, who got there first matters. With trademarks, who got there first does not matter.

    Companies can even lose trademarks by becoming too successful. For example, Xerox Corporation was in danger of losing their registered trademark "Xerox" because so many people started using "xerox" as a verb meaning to make a photocopy, using any photocopier; "xerox" was ceasing to be associated with Xerox Corporation and was becoming associated with an action not particularly related to Xerox Corporation.

  8. #8
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    Default Re: Choosing a Business Name With a Possible Conflict

    Lyon, thank you. Does the fact that I'm a registered LLC in Virginia help me in retaining rights to the company name? Sure they've been using the same name for awhile, but they are not incorporated under that name, do not have rights to that name as a DBA in Virginia (as I understand it, due to my LLC registration) and have no trademark. Our businesses are not similar; they sell a specific type of software, I manage large-scale server/hosting environments. Appreciate the replies...

  9. #9
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    Default Re: Choosing a Business Name With a Possible Conflict

    Quote Quoting C4talyst
    Does the fact that I'm a registered LLC in Virginia help me in retaining rights to the company name?
    Yes, but not to the trademark

    Sure they've been using the same name for awhile, but they are not incorporated under that name, do not have rights to that name as a DBA in Virginia (as I understand it, due to my LLC registration) and have no trademark.
    None of that matters.

    Our businesses are not similar; they sell a specific type of software, I manage large-scale server/hosting environments. Appreciate the replies...
    That matters, especially if the targeted markets differ. Note that it is not the different targeting that matters. It is how different the market is that matters. You could each target people wanting your type of product, but if such people mostly want both types of products, then you have a conflict, and you claiming a trademark would not prevail if more people associated the trademark name with their product.

  10. #10
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    Default Re: Choosing a Business Name With a Possible Conflict

    Quote Quoting C4talyst
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    Lyon, thank you. Does the fact that I'm a registered LLC in Virginia help me in retaining rights to the company name? Sure they've been using the same name for awhile, but they are not incorporated under that name, do not have rights to that name as a DBA in Virginia (as I understand it, due to my LLC registration) and have no trademark. Our businesses are not similar; they sell a specific type of software, I manage large-scale server/hosting environments. Appreciate the replies...
    Depends on what action that company will take.

    As I mentioned, I done IT consulting, but at one point, I decided to branch out doing payroll, and registered a "domain name", that had the word "Paychex" in it. That is not the entrie name for my service, but another company with that word in it's name had their "law firm" write me a letter threatening legal action unless I agreed in writing not to use that word in any form. I paid for the domain name, already spent some money for advertising materials, but after consulting with my personal attorney, we concluded it would be more costly to go to court and fight it, versus picking another name, and redo the materials. Registering another domain name is not that expensive.

    At around that time, I was a "wrestling fan", and I gone to matches sponsored by the "World Wrestling Federation" calling themselves the "WWF". I knew they used that name for a number of years, and spent quite a bit of money promoting their matches, paraphenilia, when the "World Wildlife Fund" came along, sued, because they called themselves the "WWF" long before the wrestling folks. The wrestling people fought and lost the fight even though they argued there can be no confusion between what the wildlife fund did versus wrestling. The wrestling people who lost and since changed the name to the "WWE".

    After following the fight over the WWF name, and seeing that a wrestling organization with all it's wealth lost, and changed their name, I decided it would be cheaper for me to change the name of my services early on rather than spend heavily on it, and then have to change over. BTW, the wife of the WWE founder Linda McMahon spent millions running for senator from CT in 2010, and they couldn't prevail even with all that money behind them.

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