Dear Danielle: Should I Be Concerned that a Colleague Has the Same Biz Name?

Dear Danielle: Should I Be Concerned that a Colleague Has the Same Biz Name?

Dear Danielle:

I have a question regarding my business name. I started my business on August 17, but just found out that there is another business in our industry with a name similar to mine. I know that this probably won’t matter, but I am in one state and she is in another. My long term goal is to go international, but right now, I am concentrating on local clients. By the way, I have business cards, a business license, etc. Should I be concerned about this? If so, what do you suggest I do? Thank you in advance for your advice. –FT

You are right in assuming that it doesn’t necessarily matter that you are in two different states.

This is especially true in our industry where we don’t have any geographic boundaries from each other.

If the person with the pre-existing, established use of the name takes their business interests seriously and is intent on protecting their trade name rights, you could be in for some legal problems and expenses.

In fact, the laws governing trademarks, trade names, trade dress, etc., matters requires them to defend their rights or they forfeit them.

When you’re in business, there are lots of important areas you have  a responsibility to understand.

They may be boring, complicated and not so fun, but they are imperative nonetheless because they protect us and the marketplace, keep things fair, and give us some parameters to ensure we can all play nice and get along with each other.

So the first thing I advise you to do is go to USPTO.gov and study up on the trademark and copyright information listed there.

I’m going to post some info we share in our forums on this topic and why it’s in your best business interest to come up with your own unique business name.

WHY IT’S IMPORTANT TO FIND YOUR OWN UNIQUE NAME

In our industry, we have no geographical boundaries from each other. Therefore, having a unique business name is even more important.

When starting an administrative support business, beyond just the impoliteness of stepping on a colleague’s toes (someone who was there first), here is why it’s important for you to have a unique business name:

1. You don’t want to get sued. A colleague with established first use of an existing trade name has legal rights and can sue you for infringement, and possibly even damages. It costs a lot of money, time and energy to defend yourself. If you lose (which you can by either default or because the court finds in the complainant’s favor), it can cost even more. If they win a judgment against you, they may be able to go after your personal assets, garnish wages, get an injunction to freeze bank accounts and force you to disgorge any monies you earned while using their IP (intellectual property). This is not “mean”; it’s business, and every business has a right to defend its rights and its turf if it feels it’s been infringed upon. Likewise, every business has a duty and self-preserving interest to make sure it is not infringing. It’s just not a ball of wax you want to even potentially find yourself in.

2. It’s not a great way to be welcomed into the community. Ours is a relatively small, tight-knit community. People will know you are infringing on one of their comrades. How do you think they will look upon you? And imagine if it were you… how would you feel if someone new came into the industry and started using your business name, the one you’ve been using for X years and around which all your identity and marketing has been based? It would not feel good. Trust, good will and polite society can not exist where we allow this kind of thing to occur. It’s just not cool, much less professional or ethical.

3. You don’t want to be confused with another business in the same industry. It’s going to be really important to differentiate yourself from everyone else, and that includes having a unique business name and identity. It doesn’t do you any good to be using someone else’s established business name if traffic and name recognition is going to be diverted to someone else who was there first.

4. You don’t want to have to redo everything (e.g., website, marketing materials, etc.). If you are caught infringing, you can be compelled to relinquish domains, destroy or hand over other intellectual property, and it’s going to be a lot of work and more money to start all over again.

STEPS TO ENSURING YOU DO NOT INFRINGE

So, what do you do? A bit of homework is in order. To make sure you come up with a unique name and do not infringe on the established trademarks and trade name rights of any of your colleagues, there are things you can and should do:

1. Search industry directories. Make sure no one else is using the same or similar name already.

2. Search the uspto.gov database. Check to see that no one else is already using the same or similar trade name. Bear in mind that while federally registered trade names have even further protections and recourses, a name does not have to be registered there to be protected. Changing a letter or word is not going to help you if the name can be considered to be substantially the same and/or would still create confusion.

3. Conduct a search for the name (or the predominant unique identifier) in several different search engines. Use Google, MSN, Yahoo, Chrome and any others you might think of. Better to be thorough now than sorry later. Example: If you want to use Dizzy Admin, you should search for  “Dizzy Admin,” “Dizzy Administrative,” “Dizzy Administration,” “Dizzy Administrative Consulting,” “Dizzy Administrative Consultant,”“Dizzy Business Support,” ““Dizzy Virtual Assistant,” “Dizzy Virtual Assistants,” “Dizzy Virtual Assistance,” etc. If someone else in our industry, regardless of where they are located, is using “Dizzy” (which is the relevant novel/ substantive part of the name), forget about using it.

WHAT TO DO NEXT

Once you find a name that is unique and that in no way can be confused with anyone else’s existing, established trade identity in our industry, you’re home free.

If you think you were the first to use the name, contact the colleague and see if you see if you can work things out.

If you know you were not the first, contact the colleague with the same or similar name, and see how they feel about it.

And then consult an attorney about whether it would be a wise course of action to pursue the name anyway, what the possible ramifications are, and what it might cost to defend or protect yourself. ;)

10 Responses

  1. Joy Pipes says:

    Danielle, that was a wonderful article! Sometimes we forget to think about the obvious, and this brings to light the obvious. It is our responsibility to check out the possibility of using a business name. It doesn’t work to just check locally anymore. It used to be that using a business name that existed elsewhere was okay, as long as it wasn’t being used in your geographical area, but now, with the Internet, it is very important to check things out more thouroughly. An extensive search can save money in legal fees. Even when doing an extensive search, a name can be missed.

    I think the idea of using search engines to locate varieties of a name is one of the best. Thanks for providing that idea along with the others.

    Finding a good name with the various words in it will become increasingly more difficult as the years roll on. I think if you have a niche, maybe adding your niche to your title would be a great idea. Unfortunately, there are many who have the same niche, therefore, “Niche” Virtual Assistant will not be sufficient. One would need to add an additional word, which eventually will create some pretty long business names.

  2. Andrea Busch says:

    Great advice. Does this work across country borders?

    I am based in the UK, running for 6 years, and found out recently that someone started their business with the same name as mine.
    The .com domain was hogged for a long time by some random domain buyer, my tries to buy it off failed and when it eventually came free I missed the small window to register it.

    The person with my business name is in the U.S., started about 12 months ago, and has so far failed to react to any of my emails to choose a different name.

    Needless to say, I hold all social media accounts since the beginning. The only “fail” on my end was not getting the .com domain.

    Unsure how to go forward with this. Next step would be getting a lawyer/solicitor involved I assume?

  3. If you are members of countries that participate in and cooperate with the various international copyright and intellectual property treaties, you could very well have a lot of recourse. Research the laws in your country. Here are some useful U.S. links:

    https://www.uspto.gov/patents-getting-started/international-protection/protecting-intellectual-property-rights-ipr

    https://www.uspto.gov/trademarks-getting-started/international-protection-madrid-protocol/trademark-policy

    https://www.uspto.gov/trademarks/law/madrid/madridfaqs.jsp#q1

    I definitely recommend you have an attorney who specializes in international intellectual property law. It’s far too complicated an area to try to navigate yourself; the mistakes laypeople make trying to DIY this stuff are expensive.

    But there are some things you can do yourself in the meantime:

    First, take screenshots of every instance of infringement to document and preserve the evidence. Save the URL links.

    Next, make polite, friendly contact making them aware of the infringement and details, and letting them know they will need to stop using your business name/IP immediately.

    In my experience, most of the time people are reasonable and certainly don’t want to cause you or themselves problems and will comply. However, every so often there’s an a-hole who wants to try you.

    Most of the time, these are newbies who are either ignorant of the laws in such matters or they’re just plain unethical. In the latter case, those types will sometimes ignore you, thinking you’ll go away and have no recourse. Those types don’t take things seriously until they get a letter from your attorney.

    At the same time as you are making that initial friendly contact, identify the hosting company and submit a DMCA report to get the infringing website taken down. This website will help you identify the hosting company: http://www.whoishostingthis.com/

    I would next have my attorney go get the domain names. They can go on thinking they can squat all they want, but there are laws that can force them to relinquish those domains to you.

    I also always recommend folks:

      1) always get the .com first (and if you can’t, figure out another biz name), and then

      2) buy up all the domain extensions for their biz name (or at least the main ones like .biz, .co, .info, .net, etc.). This helps protect your IP and saving you the trouble (and expense) of having to go after domain squatters.

    Oftentimes, one letter from an attorney is all that is needed to sort things out. Once they see that you are serious, they are going to want to save themselves a huge and expensive headache.

  4. Andrea Busch says:

    Thank you kindly.

    Yes, she ignored me and I’ve left it as is for a while due to other life things.

    But will get back onto this again, as I obviously put a lot of effort and many years’ work into my name.

    Never boring to be in business 😉

  5. Never indeed, lol. I hope it works out, Andrea 🙂

  6. Andrea Busch says:

    I was new to the business world, and in Europe the .com domain is not always automatically “better”. Having worked at an ISP previously, I was aware of domain “hoggers” and just thought I will wait it out. Silly, as I now know of course.

    I shall follow your advice. Many thanks!

  7. You’re absolutely right, Andrea. For example, if you’re primarily doing business in the U.K. and the “default” primary domain extension there is .co.uk, then that would be the first one to get and use as the primary business URL. Thanks for pointing out that clarification. 🙂

  8. Andrea Busch says:

    Got that 🙂

    Just not .com and that’s when I noticed that someone set up with my business name, but only “recently”.

    Globalism at its best, but as I am very much an international business, I cannot let it slide.

  9. I knew you did. That was more for the benefit of others who read the comments and are just learning about these things. 🙂

  10. Phyllis Malone says:

    Great article!

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