sought to register it, the findings could be sobering. A brand you assumed you could use as you expand may in fact not be available and
require a rethinking of the brand.
In the example of Blue Moon Organics, if you were seeking to use
the name for organic prepared food, would the fact that “Blue Moon
Brewing Company” already exists be a problem? Or what about starting a cosmetics company called Blue Moon Organics? The answers depend on many factors. How many other “Blue Moon” products are
“T“Trade name filings, corporate formation and omain name registrations are very different from federal trademark protection.”
there? How related are the consumption and distribution patterns between food and beer? What about the relationship between beer and
cosmetics? Arguably, you may have doubts when thinking about selecting Blue Moon for the mark with organic prepared foods. There likely
would be no concern, however, if the brand were to be used in cosmetics, because the expansion from beer to beauty products is much less
probable.
The bottom line in selecting a new brand if you find someone else
using the same (or close) name, but for a different product, is to ask
yourself: If I were first, would I want to stop that guy? If the answer is
“yes,” don’t select that mark.
A note about “organic” products: the word “organic” is free for all
certified organic products to use. Therefore, to have protectable rights
in your name as a whole, you must combine the word “organic” with
other more unique terms. A good example is the brand OrganicGirl,
which sells organic food. This name goes beyond just describing the
product, i.e., they are not at-
tempting to market and sell
“organic girls.” If the name
were simply describing the
product, such as “Organic Pro-
duce,” it would be hard to
trademark. The combo of “Or-
ganic” and “Girl,” however,
makes it unique, memorable
and highly protectable. An-
other example is Juice Organics. The brand uses the descriptive word
“juice” to highlight the fact that its cosmetics are made with juice. The
company, however, is not trying to market organic juice as a product.
The combination of this brand name with the use of a distinctive logo
transformed the mark as a whole into a strong, protectable mark.
But I have the domain name. Trade name filings, corporate formation and domain name registrations are very different from federal
trademark protection. Having rights to a trade name does not necessarily confer rights to use it as a trademark. Additionally, doing business
OrganicGirl has a strong trademark that is both legally protectable and easily recognizable by consumers.
under a trade name, or filing articles
of incorporation, does not guarantee
exclusive rights to use that business
or corporation name as a trademark.
A trade name filing in a county serves
to allow the public to identify the entities operating under the assumed
business name. It does not ensure
trademark rights beyond providing
some evidence that a particular name
has been used at least as early as the
filing date.
Similarly, the filing of articles of incorporation identifies the principals
for this business identity but confers
no trademark rights. Registration
with a county business office or with a
secretary of state only means there is
not another company incorporated
or qualified to do business in that
state with virtually the same name.
The registrations in the United States
Trademark Office are not used by
these county and state agencies to
“clear” business names. The federal
Trademark Office and state governmental regulatory agencies don’t talk
to one another. For example, no food
producer would think it could sell
“Wheaties” brand products. However,
it could be possible to register a California corporation as “Wheaties Inc.”
or to file a trade name in your county
as d.b.a. “Wheaties.” It is also possible
that you could register some variant
of the domain name
www.wheaties.com. However, none of
these actions give rights to actually
use Wheaties as a trademark.
These days, many entrepreneurs
believe that all they need to do is obtain the domain name to have all the
rights they need, but just owning the
domain name does not confer trademark rights. Say you started a
www.eatwheaties.com fan site for the
cereal. The owners of the rights to
the brand probably would not stop
that activity. But if you competed with
the Wheaties product on that website,
you would have a problem. Bottom
line: acquiring the domain name is a
