How is it that getting your business formation documents approved by your Secretary of State’s business office isn’t enough to give you trademark rights to your business name?
Here’s the thing that made the jaws of many of my lawyer colleagues hit the floor when I taught a class on intellectual property issue-spotting for non-IP lawyers last summer: To approve your business name the state searches only their business registration records to make sure no one else in the state has the same official name for a similar business entity. States don’t even search their own trademark databases when approving a business registration. That’s right.
That seems crazy, but it’s true! That means the state may approve a business registration for a company with a name that is already registered as a trademark in that very state by another business.
The states also don’t search the nationwide federal trademark database from the USPTO, nor do they search the internet for common-law, or unregistered, use of the name.
That’s why state registration of a business provides ZERO assurance that
- the name is available to you to use as a trademark, and
- the registered name isn’t infringing someone else’s trademark rights.
You could register your business name with the state only to find out later that another business—perhaps in a different state—already owns the federal trademark for that name. If that business operates nationally or even in a related industry, they could send you a cease-and-desist letter, and you’d lose against that like someone bringing a knife to a gunfight. You may owe them a large sum of money for damages and attorney fees. You’d be forced to rebrand and do so by a deadline the other company or a court sets. That’s not just inconvenient—it’s costly in terms of money, time, and customer confusion.
So how DO you make sure you really own the rights to your
business or product name and aren’t infringing on someone else’s rights? Stay tuned for the next post, or you can watch/read the entire thing at: https://kingpatentlaw.com/its-never-enough-just-to-register-your-business-name-with-the-secretary-of-state/
If you’d like help with trademarks, let’s talk. You can book a consultation online or by calling my office, use my contact form, or send me an email.
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