More than once I have had a new client visit my office seeking assistance because they discovered that someone else is using their business name or their business logo in direct competition with them. In most instances, the client has incorporated his business, but has done nothing else to protect their name.
There are various legal methods for protecting and trade marking a business name, logo, and other works that will enhance the value of a business. Just because someone opens a business in the form of a corporation or a limited liability company, does not afford any type of protection against others using the name. The fact that such a filing makes this your “legal name,” does not give you the absolute right to use the name (it may already be protected through some form by another person or entity), nor does it prevent somebody else from using a similar name in business.
Registration and protection of a name can, in essence, be done on three levels. The first, is done in the county in which the business is operated by the filing of a fictitious business name (normally referred to as a DBA), and requires the individual (which may be a business entity such as a corporation) to file certain documents with the county recorder, after publishing the fictitious name in a local paper. Once done, and providing that no one else has already protected the name, you will “own” such name as it relates to the business operations in the county in which the businesses is operating. If someone was to violate such use, you would then be in a position to obtain an injunction to prevent the name from being used by another business, and you may even be entitled to recover damages. This method works for a business that will only be operating in one county, but not for a business that will expand into other counties or for businesses concerned about a competitor using the same name in a different county.
The second level in protecting a name is by filing a copyright and/or trademark with the Secretary of State in the State of California. This inexpensive procedure provides protection of the business name or logo throughout California, as long as the name or logo has not been protected through a Federal method. This protection applies to California only, and to the extent that such name would be used outside of California, it may not be protected. This registration on the state level applies to trademarks as well as copyrights.
If you expect to conduct business outside of the State of California, upon commencement of interstate commerce (activity between two different states), you can seek to have your name, logo, or other property that is trademarkable, protected on the Federal level. This is a much longer process (usually 6 months to a year) and costs will range between $1,000.00 to $2,500.00, depending on the work.
Attorneys usually engage an outside company to perform a “trademark or copyright search,” which will help to determine whether or not others have been using the name or a similar logo prior to incurring substantial trademark expenses. Once the application is filed, a trademark attorney working for the Federal Government investigates whether or not the mark can be copyrighted or trademarked. If it is accepted by the Trademark Office as not being in use, and after proper publication, such registration will be granted.
In some cases, a proposed mark may be “too generic” at the initial stage to be considered for a copyright or trademark, however, there is a “secondary” registration that is allowed, which does not afford the user absolute protection, but after a period of time, may be moved to a primary registration.
If you have not already properly protected the name of your business in the areas in which you plan to operate, you need to do so as soon as possible. This will help to assure that someone else does not use the goodwill that you are creating in the future. You should seek the advice of an attorney who is versed in this field.