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Trademark names

1:44 pm on Jul 21, 2010 (gmt 0)

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I've been running under a DBA for almost 2 years. I did my checks and due diligence to make sure the name was free, at the local, state and trademark level. Right now I'm doing my articles of organization for lc, and I did one more check. Lo and behold, there is a similar name in the USTPO database. The business is quite similar as well, although it's in a different state.

I know I can still register the lc at my state level, but while browsing the USTPO, I notice many similar names and similar businesses. I'd like to keep my name, since many hours where spent in that area and I'd just fold up if I had to start over.

I know a question here doesn't constitute the proper footwork, but I'm looking for opinions before I get started.

Similar example:

#possible competitor-

Sunshine Consulting, or simply "Sunshine" as registered. Application design, web/portal, resource management, large project management, multiple methods/disciplines. Medium to large business player.

#me -
Sunshine Media-
Would register as "Sunshine Media". Specific to web design, database management, dynamic content, music production, photography, copy write, etc. (and speaking of music, there is also a i.e Sunshine Music out there. This is BS). For the Small business. Basement html, php, css, js.

Does it sound like my business is over before it started? There are so many obvious differences. The other company is so beyond anything I could ever dream to be and stands as an authority in it's area; I am 1 person with a very narrow scope, the other is several teams in multiple offices. And why didn't this name show up 2 years ago, when it was granted trademark in like 2003? Argg..

I was thinking of this when I was filling out the articles document. I tried to be so vague and use wording that could encompass anything in the digital space, but not limited to. Re-reading it later, it sounded silly, so I started refining with web research. That's when I found this problem.

Also, is there a simple online law service that could help me with this? It's going to be months before I have time to actually go out into the daylight and visit a lawyer.
3:59 pm on July 21, 2010 (gmt 0)

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After talking to a lawyer, it sounds like I'll be spending at least $350 for him to tell me to change my name. I can tell by his tone, and the obviousness of "broad view" defined by the patent office of similar trademark names, that I'm the loser here.

My name really isn't that important right now. I just need a name to operate under and and build my presence. I missed a good opportunity because I run as a common dba street vendor. BS I say!

Is it easy to change a business name later on when it's more established? I really don't have time for this right now. It took me a long time to get my loser name going in all aspects. Now I'm going to choose a new name based only on it's infringementless qualities, then later on do it all again with branding in mind. I found a new name (that doesn't come up in any search) I can live with for awhile, but it is weak where as my last choice was strong.
9:12 am on July 22, 2010 (gmt 0)

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with branding in mind. I found a new name (that doesn't come up in any search) I can live with for awhile, but it is weak where as my last choice was strong.

If you want to market anything, you need a brand. Get that part done FIRST, else you'll be working for someone else (in that you'll not max your efforts, might be diluted, might fail). Sometimes a "keyword" brand works (though most keywords are already in use and have been for decades) but most often an invented word wins the day (ie. think "Google"). Put some effort in this as what you do from here on out hinges on that.
2:23 pm on July 22, 2010 (gmt 0)

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Thanks tangor, what you say is so true! I have already been trying to make up words. I feel like everything is going to lay in wait for months - even a year, right when I was ready to kick things into the next gear. Maybe I'll get lucky and come up with something that feels good in the next few weeks.

It's like I'm stranded somewhere far away with no way to communicate, and now way to get home.

On another note, if I'm truly going to ride solo, this needed to happen before getting off the bus. My previous name may have felt strong for my needs, but it still had serious weaknesses (obviously).

Still, I know in the back of my head that sometime down the road, the perfect name, logo, brand idea will pop into my head and I'm going to want to start over again. I can't force myself to come up with the best brand idea for myself in a limited amount of time. You know, it's my company; it's like a child. For a customer, you do it until the customer shows true happiness or satisfaction (or they stop paying you). For my empire it'll never b right, since all my work for myself is free. But on the other side, many businesses make buckets 'o money that have really lousy branding.
7:19 pm on July 22, 2010 (gmt 0)

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Well, I think you need a different lawyer. I wouldn't give up on this and schedule out some time to put into it.

You can't trademark specific words, but you can trademark words that are by definition "non-words" like SealAWidget or something. You can trademark phrases, but it gets into areas that are often contestable.

I trademarked someone's logo and here's my experience. I am not a lawyer but the online trademark process is very specific and it won't let you "mess up." We trademarked a mark *and* a specific phrase, her company name. Part of the registration is that it's only registered with the two together, one without the other is NOT registered. You need a separate reg. for each.

Any combination of phrases that come close are contestable by her (now.) That's a whole different gray area though, and you have to police it yourself or pay someone to do it. That is, someone can come in and apply for a TM that's infringing. Exact matches are usually flagged right off and you can't continue. If it's not an exact match but close, and we don't catch it during the publication period and it gets registered, now you're looking at muchos dinero to get it repealed. Oppositions that are deemed valid during the publication period don't cost you anything other than filing fees, if you can prove the infringement (well, unless you use a lawyer to oppose.)

Here's the rub, what a lot of people don't know: once you get your application straight, a trademark lawyer is assigned to your case for review. So it's going through a lawyer ANYWAY. If they find anything too gray, they will return it as not acceptable without modification, and they will point to the documentation, without further elaboration, which is why lawyers are needed here. Ours was rejected twice, because I didn't grok the language. It was something like, "specify the colors of the mark in all aspects (paraph.)" As it turned out, I hadn't specified the colors that would apply to the typography. A change of three words in the app. and it was accepted.

Once accepted, it is published for opposition. During this period, had there been any previous mark holder with a similar mark (there wasn't,) they could have contested it and off you go to court (or withdraw the claim.) Once the publication period expires, it's registered, you can use the circle-R with pride (and stand behind it, unlike most of the marks you see,) and you receive the 10 year cert. It takes about a year to complete.

Having a lawyer doesn't speed up the process, it just means you don't have to know what the legalese means. Having done it, I'm glad I did, though it hurt my head, a lot. :-)
2:36 pm on July 26, 2010 (gmt 0)

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Hi rocknbil. I'm not even going for trademark right now, just trying to register llc at state level. But your reply makes me think a bit more.

My company is "widegets blue", the other company is just "widgets" so to speak. We both do the same thing, except the other is way more established.

I've actually been working on another name. No reference to it out there anywhere whatsoever. The only problem: my old name was like "strong widgets". The new name, while elegant, is more like pretty soft widgets with wings. It's emasculating, but it's original and the new logo is looking super cool. It will change the way I do business though.

I may check out another lawyer. I only called one. Thanks!

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