For example: I am a florist and I want to open a new company in another state. My competitor's legal business name in that state is "Flowers Unlimited, LLC" but they use the website "BestFlowersTeam.com." They are also not using any DBA's that reference their URL.
Can I still open a company with the name "Best Flowers Team, LLC"? or am I restricted because they picked a good generic website URL.
If it is OK to open the "Best Flowers Team, LLC" - does that give me any leverage to restrict them in the future from using the URL or the name "Best Flowers Team" in their adverts?
The names above are generic and for examples only. Your advice and recommendation is dearly appreciated.
By using the website name bestflowersteam.com, it is likely that they have earned trademark rights in that mark. That means that, while you may be able to register that name as a business name, you would likely be infringing were you to use it in commerce. So, you likely could form the business under that name, but your business operation should take place under a DBA.
I website URL is not the same as a trademark, but by using a URL you make it a trademark. You have to be careful to distinguish among URLs, trademarks and company names, but there are times they may come together.
A domain name alone does not create trademark rights. Also, a corporate name and a trademark are somewhat unrelated concepts. If someone with one restaurant in California owns the URL bestburgers.com, that does not stop you from incorporating in NY as bestburgers, Inc. If you drive around the country, you will see many businesses, on a local level, with the same name. So, just forming a corporation with the same name as someone's domain name is probably not infringing. At the same time, it will not work in reverse. You will not be able to later force someone to give you the domain name.
Trademarks, urls, and corporate names are different things. Trademarks identify the source of goods or services. If you don't use a corporate name or URL to do so, no trademark rights accrue. If you do, you'll build tm rights regardless of registration. Unless their is a user with senior rights that you're infringing.
You should speak with a tm attorney to clear the rights to use the name you want. Be prepared to go through a few names you want - make a list.
Anything I post on Avvo, a public forum, is intended as general information based on the facts provided, and is not legal advice or a legal opinion. My posts do not create any attorney-client relationship, and any contact with you beyond these posts will start with disclosure of opposing parties to allow me to check for conflicts. You should not rely solely on these posts to take or not take any particular action. You should speak with a competent attorney before taking further action.
Use of a domain name, without more, is not trademark use, but is merely use as an internet address. However, if the domain name is also used in other ways, for example, in large font at the top of the home page, then it becomes trademark use. So. mere use as a domain name does not preclude you from using it as a trademark. However, their pre-existing use as a domain name would preclude you from stopping them from continuing to do so, even though use of a domain name that is confusingly similar to a trademark is trademark infringement. You did not have trademark rights when they adopted the domain name.
Before adopting any trademark, I strongly encourage having a clearance search performed and registrability/right-to-use opinion prepared. There may be other businesses with potentially confusingly similar names that you do not know about yet. Now is the least expensive time to investigate this issue and ensure that your trademark is truly unique.
You really cannot expect to receive any clearance advice here on the trademark, which is really what this is about because there are a number of factors to consider and that kind of advice simply cannot be rendered in a vacuum nor in the hypothetical.
Merely registering a business name with the state or county conveys NO rights to use that name in commerce as a source identifier for your goods or services, i.e., a trademark. For example, I might be able to register the name of my new tech start up called "Google Plus USA.com" because there is no other business already registered by that name (keep in mind that DBA records are rarely even vetted for conflicts), but just because I was able to register with the state certainly does not mean that I am not infringing on Google which I sure would be.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
That's a really bad idea!!
Why would you want to register a corporate name, even if it is available locally, when a direct competitor has superior rights in the trade name and trademark. You need to contact an experienced trademark attorney who can counsel you in confidence about your business plans.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
It looks like your end goal is to gain control over the domain name or at least prevent your competitor from effectively using that domain name. You need to have your trademark attorney evaluate whether there is any trademark rights in that domain name, and if so, the mark's strength. If the domain name has trademark rights associated with it, then your plan of forming a business entity with of the same or similar domain name will likely not be effective at reaching your end goal and could backfire if you use that business entity name as a trademark - exposing you to trademark infringement liability. Additionally, there is a back drop of various state laws surrounding unfair competition that may be relevant here as well where your plan could expose you to liability. Consult a local trademark/business attorney to go over your objectives in private and in detail.
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