What’s in a Name?

Posted on March 28, 2007

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I have had an ongoing battle with my friend Allen Kilgore.  It seems Allen wants to name his team for his MS Walk — Team Red Mountain.  Now I have nothing against the good folks at the MS Society. (In fact, if you want to donate, click here.)  However, I was struck by his assertiveness in using the name – Team Red Mountain. We have just spent oodles of money printing up coffee cups with Red Mountain Law logos.  Surely, we have some rights.

Although I am fond of it, the Red Mountain Law name has some problems.  First and foremost,  we have named ourselves after a mountain in Birmingham, Alabama. We do not score points for originality.  We have difficulty claiming complete ownership over the Red Mountain name.  It is, after all, a well known geographical landmark.  Can we obtain any intellectual property ownership over that kind of name? And, apparently, we were not the first to use Red Mountain.  A bank, a dentist, a spa (which I still need to visit) and apparently a MS Team — the aforementioned “Team Red Mountain” — all claim to have come up with their "Red Mountain" before us.

So have we completely screwed up?  Should we resort back to the old fashioned law firm name that uses last names?  I certainly do not think so, but mainly because I like the name better than a last firm.  From a legal perspective, I do not have the clear cut answer that my business side needs.  Problems exist to claiming a trademark with a geographical reference.

Still, I feel reasonably confident about the use of the name.  No other law firms exist with the same name.  We are easily distinguishable from the spa, the bank, the dentist and the MS fundraiser.

This naming area of the law is confusing for small businesses and complex for attorneys.  One major problem is the interplay between reserving names with the Secretary of State and the laws of trademark.  Before you can obtain a name reservation, you have to go through a trademark analysis with the Secretary of State’s office.  That is fine, except the analysis looks only at corporations — not LLC names or trade names.  The Secretary of State is thus making determinations with an incomplete frame of reference.

Until we can sort this out, my advice to businesses is to first and foremost be sure that the name you chose for a new business is not taken by taking the following actions: (1) do a Google and Yahoo search to see what is there and (2) check the U.S. Patent & Trademark Office website for other trade names.  Another good step — if a U.S. Trademark is not appropriate — is to file a trademark with a state’s Secretary of State.

Additionally, try and work it out: Apple and Cisco worked out a dispute regarding IPhone (see "Cisco and Apple Reach Agreement on iPhone Trademark"), Apple and the Beatles worked it out regarding the use of Apple in the music industry (see "Apple and the Beatles Make Peace Over Their Logos") and I worked it out with the MS Team (they are making T-shirts that have our name and logo on it).  If businesses do not try to be cute in naming themselves something close to an established business and if trade name owners are reasonable in the handling of possible infringements (see "Resist Cease and Desist"), then we should all be able to do more business and engage in less conflict.

The standard for determining if there is infringement of another person’s trademark is likelihood of confusion.  The proper means of determining if likelihood of confusion exists was set out in the case of In re E.I. DuPont de Nemours & Co., and required that the following factors be considered:

  • The similarity of dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The similarity or dissimilarity of and nature of the goods or services described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. “sophisticated purchasing”.
  • The fame of the prior mark (sales, advertising, length of use).
  • The number and nature of similar marks in use on similar goods.
  • The nature and extent of any actual confusion.
  • The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  • The variety of goods on which a mark is or is not used (house mark, “family mark, product mark).
  • The market interface between the applicant and owner of a prior mark: (a)  a mere “consent to register or use; (b)  agreement provisions designed to preclude confusion, i.e. limitations on continued use of marks by either party; (c)  assignment of mark, application and goodwill of the related business; and (d)  laches and estoppel attributable to the owner of the prior mark and indicative of lack of confusion.
  • The extent to which applicant has a right to exclude others from use of its mark on its goods.
  • The extent of potential confusion, whether de minimus or substantial.
  • Any other established facts probative of the effect of use.

No single factor is determinative.  The factor’s importance will vary from situation to situation.

Link to National MS Society website

Mike Goodrich, Goodrich Law Firm, LLC

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