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Part of the Preventive Law for Entrepreneurs Series (published March 2004 in the Lower Columbia Business magazine)
By: Charles A. Hillestad
You spend a lot of money, not to mention personal time and effort, developing the good name of your business. You design logos, signs, labels and web pages to name but a few of the myriad ways you might have your name displayed. Unless you are a multi-talented person, that usually involves a high priced professional to polish such designs.
You also have checks, letterheads and business cards printed, none of which are cheap these days. You purchase ad space in newspapers, on radio and maybe even TV. In fact, few of your promotional efforts spreading your name are free. Some end up becoming quite expensive running into the hundreds or thousands of dollars.
You might even make charitable donations in the business name, sponsor softball teams, join trade organizations, give speeches trumpeting your endeavors and send out press releases announcing your latest accomplishments. It all adds up to more costs.
You file your name seemingly everywhere as you seek business licenses, request tax identification numbers, pay utility deposits, enter into supplier and vendor contracts. Some are difficult to modify once in place. The phone book, by way of illustration, only comes out once a year.
After all that work building up a name your suppliers and clientele will remember and rely upon, one of the last things you want is to receive a cease and desist letter telling you the name belongs to someone else. At a minimum, that means still more frustrating time and effort, probably some attorney fees and possibly even damages payable to someone else if you did not do your homework before using the name. It's called infringement. A company name is property, intellectual property, but a form of ownable, protectable property nonetheless. Any such dispute over your name will certainly cause confusion for your customers and creditors. And, win or lose, it's certainly not the type of publicity you would prefer. The old saying about "Any publicity is good publicity so long as they spell your name right" is just not applicable in this situation. How can you avoid such a potential calamity? The answer is preventive law. Do your "due diligence" before you spend lots of unrecoverable money on a name that must later be changed.
Oregon Searches
How to start? Begin with the Oregon Secretary of State. If you have an internet connection, type
http://sos-venus.sos.state.or.us:8080/beri_prod/PKG_WEB_NAME_SRCH_INQ.LOGIN. That will put you on the name search page for corporate and assumed name filings that have been entered into the Oregon database. Just insert in the "Business Name" search box blank your own proposed name or names. If other filings appear after you press the search button on the page, investigate each one further to see if it is still active and if it might be too close to what you propose to have.
You may have to consult with an attorney to help you make such choices. If you want legal advice in this area, perhaps seek a trademark law specialist. (A website for attorneys by specialty may be found at http://www.martindale.com/locator/home.html.)
If your search at the Oregon Secretary of State for already registered business and corporate names turns up nothing similar to the particular name you desire, you can reserve it for a small cost. You should be able to print the reservation form for that purpose directly off the Secretary of State website. Or, simply call that office and ask to have a copy of the reservation form faxed to you.
Alternatively, if you are ready, to immediately file articles of incorporation using the chosen name as the corporate name, you can skip the reservation step and proceed immediately to filing the articles. It should be noted you don't have to be incorporated to use an assumed name. Even sole practitioners are allowed to use assumed names in business. You can have multiple assumed names if you wish.
Name Selection Suggestions
As to what name you select, that's up to you, but as a suggestion, try to pick something distinctive. The more unique, the better.
To the extent you are able, stay away from what might be called generic name components such as calling yourself the "Seaside Shop" or the "Astoria Outlet" or the "Shoe Store." Not only do those tend to be dull and do little to distinguish you from others, using the name of the city or the type of business or other generalized descriptive elements to build your newly selected name can lead to controversy as evidenced by the recent highly publicized fight involving Bandon Creamery and Tillamook Creamery.
It is possible for a business with a generic name to gain a secondary meaning over time, but it adds to the burden and makes protection less assured.
Assumed Name versus Trademark
Whatever name you are interested in, don't stop with just filing for what is known as an Oregon "assumed" name. The Oregon statute regarding assumed business names gives you little or no trademark type protection. For that, you want to obtain the separate form needed to ultimately file as an Oregon registered trademark.
You can trademark just the words in the name or you can draw a unique design for the look and layout of such words. First, contact the Secretary of State to insure there are no trademarks already filed that are similar. You probably cannot search the Oregon trademark filings (as opposed to assumed name filings) on the internet. That will probably have to be done by a phone call. Dial the Corporations Division of the Secretary of State's office, 503-986-2200, and ask for assistance. There is a relatively small price to file under the trademark records in addition to the assumed name records.
Unlike assumed name filings, filing for a trademark is generally not going to be available to you until you actually start business. You must be genuinely using the trademark (name) in commerce to apply for the protection. Nevertheless, you can at least get the form ready to go and file as soon as you start doing any sort of real business use of the name.
Federal Searches
You need to take an additional step though and at least take a look at what is happening beyond Oregon. Start by checking out the federal trademark filings which can be found at http://tess2.uspto.gov/bin/gate.exe?f=tess&state=k8pj6a.1.1. Again, you can do a search through your internet connection. There are several types of searches available. Probably the easiest to get started with is the first one listed, the "Basic" one.
The home page of the US Patent and Trademark Office web site also has a host of useful background material on trademark and trade name protection. Stop at its "first time user" link to browse among the articles and FAQs.
If the name you are seeking seems to be available, you can even register while on-line. At $350.00 or so per filing, it's more expensive than Oregon as well as less user friendly when trying to register under the do-it-yourself option. If you don't feel comfortable doing that or don't understand some of the jargon or have any questions at all, contact a trademark attorney for assistance in your filing before proceeding further. It is going to take awhile to complete the process, probably the better part of a year before you get official confirmation from the agency that you are fully registered and all protest periods are over.
While you definitely should at least search the national filings to see if anyone might conceivably come after you because you picked a name too close to theirs, you can elect to not file. That creates a risk, but if all you care about is lessening your chances of someone stopping you from using the name as opposed to you halting others, it is not critical to file.
One thing is critical. If in your searching you discover someone else has already registered, definitely pick another name.
Filing nationally might not be necessary for your particular operations, especially if you have no business dealings outside of Oregon and never intend to go after that market. Even if you do plan to sell interstate, you can still choose not to register. What you need to decide is whether the cost of registering is worth the presumption of legitimacy from being awarded a registration. Among other things, formal registration goes a long way toward date stamping your priority in time against other later competing claims.
Other Internet Searches
Of course, merely because no one else has formally filed under your name nationally or statewide before you do does not automatically mean you will win. It pays to conduct a little more investigation than just the trademark registrations. As long as you are on the internet, go to some of the broad based search engines like Google and Yahoo and type in the name you hope to use. What comes up? If others have the same or similar name, investigate further or ask the advice of legal counsel who has expertise in the subject matter.
Speaking of the internet, consider obtaining a domain name. It costs less than $40 a year to obtain and keep a domain name. Even if you do not currently use e-mail or have your own internet presence, you might in the future. Go to http://www.networksolutions.com/en_US/index.jhtml?siteid=5&channelid=P13C5S570N0B9A 1D38E0000V102&click-id=1000000000 to see if the one you want is available. When checking domain names, be sure to check the alternative to ".com." There is also ".biz." ".bz," ".info," ".us" and many more that can be attached as an extension. In other words, the identical name might be found with just as slightly different ending.
Be Watchful of Others Infringing
Once you have a name that is worthy of protection, be diligent in protecting it so that you don't lose it. You are not allowed to sit on your rights which is why Xerox, for instance, sends out demand letters every time it hears someone say they are going to "xerox" rather than "copy" something. It is why McDonald's tries to halt anyone from opening a business with the name "McDonald's" in it and why anything with a pair of arches will get a similar demand letter.
You need to do the same thing. If someone is trying to steal your good name, call them. Good luck and when searching for what to call yourself, to paraphrase Shakespeare, keep in mind that a rose by any other name would smell as sweet.
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