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The Secretary of State Can’t Protect You

The Secretary of State Can’t Protect You

by | Sep 18, 2023 | Brand Protection 101, Infringement

"Promising New Company Wiped Out by Brand Squabble"

I want to give you a warning to keep this headline from being about YOUR COMPANY. Using a brand that is similar to another company’s brand is called trademark infringement. This can lead to you sending ALL YOUR PROFITS to the other company. It does not matter if you did not know about the other company. Check out this post detailing an infringement case in which one company wins $43 million and the other can no longer use his own last name.

#1 Myth

“My brand is safe because I filed with the Secretary of State”

Brand protection is not the same as registering your company with the Secretary of State. Filing with the Secretary of State is very important, but it has NO CONNECTION to protecting your brand. A few reasons why this is true:

1) Each state has its own Secretary of State;

2) Not every company does business under its legal name;

3) The Secretary of State does not look at the types of business each company operates

4) Many brands that are used are not the name of the company.

Secretary of State

Let me explain further… 

1) Each state has its own Secretary of State.

Brand Protection primarily concerns whether or not brands used by different companies would cause confusion among consumers. This is a detailed analysis and Secretaries of State cannot perform this review for every company in their state. Many companies operate across state lines. When you organize a business with a Secretary of State, it is only checking the records of that one state. It is not looking for companies which may have some market presence in that state, but do not have enough connection to that state to require it to file as a foreign entity.

2) Not every company does business under its legal name.

Brand Protection primarily concerns whether or not brands used by different companies would cause confusion among consumers. This is a detailed analysis and Secretaries of State cannot perform this review for every company in their state. Many companies operate under aliases. These aliases are often recorded with clerks of county courts as DBAs, or “doing business as.” A Secretary of State would never see these DBAs when it checks to see if your name is available to be used as a company name in that state.

3) The Secretary of State does not look at the types of business each company performs.

Brand Protection primarily concerns whether or not brands used by different companies would cause confusion among consumers. This is a detailed analysis and Secretaries of State cannot perform this review for every company in their state. When a Secretary of State determines that you cannot use a name as a company name, it is not saying that you could not use that name as a brand. Customer confusion involves determining the similarities of the brand names, and the relatedness of the products or services sold under the name. The Secretary of State is only checking the name itself, and not the types of businesses the companies perform.

4) Many brands that are used are not the name of the company.

Brand Protection primarily concerns whether or not brands used by different companies would cause confusion among consumers. This is a detailed analysis and Secretaries of State cannot perform this review for every company in their state. Many brands in the marketplace are not the names of companies. For example, when you go into a McDonald’s, you can order a Big Mac, a Quarter Pounder, and a Happy Meal. These are all brand names owned by McDonald’s, but are not company names recorded with a Secretary of State.

Secretary of State

Don’t take on this Needless Risk! I can help you reduce the risk of being an infringer. This will allow you to focus on growing your business and keeping your profits.

The Secretary of State Can’t Protect You

Brand Infringement: A Battle of The Berries

by | Sep 13, 2023 | Cease & Desist, Infringement

Brand Infringement: Battle of The Berries

I was recently explaining to a friend how expensive brand infringement can be if you are found to be infringing on another company’s brand. I have a story about the word “Dewberry” that illustrates this. Dewberry is an uncommon word. Webster’s definition is any of several sweet edible berries related to and resembling blackberries. It is also an uncommon last name. Not many people are aware of the word Dewberry. In addition, it is also a part of the name of a prominent civil engineering and surveying firm which expanded into real estate development. Oh and wait, there’s more! It is also a word in the name of another real estate development company.

Brand Infringement

A Tale of Two Dewberries

Dewberry Engineers began business in the 1950s. Dewberry Capital began business in 2000. DE started in Virginia; DC started in Georgia. Both grew and expanded over time, and they ran into each other in the early 2000s. DC sent a demand letter to DE claiming it had senior rights in Georgia. DE filed suit. The two parties settled in 2007 with DC agreeing to certain limitations, including that it could not use “Dewberry Capital” in certain areas, and would only use a specific column logo.

Brand Infringement

This should have been the end of the matter. DE gave up the opportunity to take profits from DC in exchange for a certain outcome. DC just couldn’t leave good-enough alone. In 2017, DC rebranded to DEWBERRY GROUP and began using a different logo. DE brought suit for breach of contract and trademark infringement. DE was able to prove all claims and was awarded a judgment of $43 million. This number was the amount of profit DC had earned while committing brand infringement with the name DEWBERRY GROUP. DE also received reimbursement for its legal expenses.

Don’t Dew Them Wrong! 

In the end,  DC was also permanently stopped from using the name “Dewberry.” That’s right, DC founder’s last name was taken from him. So yes, infringement can be incredibly expensive. It often puts a company out of business. Companies of all sizes should want to avoid this. I started my firm to help smaller companies with this exact issue. Infringement suits can be the demise of a small business. 

Are you thinking about using your last name as your business name? Check out my previous post to find out more information that can prevent you from ending up a dewberry!

Can I Use My Last Name For My Business?

Can I Use My Last Name For My Business?

by | Sep 8, 2023 | Brand Protection 101

You May Be Wondering…

“Can I use my last name for my business?”. The short answer is yes, but this may not actually be in your best interest. Many businesses want you to know that they stand behind their product or service. Some businesses want you to know how proud they are of their business. In both cases, it is common for the business name to contain the last name(s) of the owner(s). Surnames, aka last names or family names, are considered descriptive. You do not necessarily want your brand name to fall under the descriptive category. The more descriptive your brand name, the higher the risk that you face in not being able to protect your brand.

Just like people should have a general right to use related terms in branding, the same general right applies to people using their last names. However, if your name is not distinct enough, you may face trouble gaining trademark rights. Interestingly enough, any descriptive term can become distinctive through long-term use and promotion. This could prevent others from using the same last name in a similar industry. A common example is McDonalds. Few people think of Richard and Maurice McDonald when they think of this restaurant, so I would advise anyone named McDonald to pick a different brand for their restaurant. Unlike McDonalds, if you own a small or mid sized business, it’s risky to use your last name as your branding. If you’re still unsure whether or not using your last name is a good choice for your business, please take a look at the following 5 factors that may make or break your brand. 

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Rarity

Is the surname rare or is it commonly used?

Connection

Is it the surname of anyone connected with the owner?

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Meaning

Does the term have any recognized meaning other than as a surname?

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Sound

Does it have the “structure and pronunciation” of a surname?

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Style

Is lettering stylization enough to create a distinct impression?

Hey Lawyers! Yes, you.

I’m talking to you! You too, Accounting firms. You do NOT have an ABSOLUTE RIGHT to start a business using your last name(s). Doing this could lead you to serious trouble. It will take you years of gaining reputation in your firm to acquire the level of distinctiveness to protect your firm name that is simply your last name. If this sounds like you, you may need a Legal Brand Counselor on your side.

For a story on an infringement case that eventually led to one man being banned from using his own last name for his company, check out this post.

Trademark Protection 101

Trademark Protection 101

by | Sep 4, 2023 | Brand Protection 101, Education

Trademark Protection 101

What is a brand?  It depends on who you ask.  Most consumers think of names of products or services, logos, taglines and similar commercial signs.  Business people think a brand is an item that causes an emotional response in a company’s customers, and hopefully makes those customers feel the need to buy from the company again or tell others about their experience.  Lawyers talk about “trademarks,” which is a source identifier that tells the consumer who made the goods or offers the service.  These aspects are all interconnected in the world of Trademark Protection. 

Trademark Protection 101

Protect Your Brand With a Trademark

Most solopreneurs and small business owners have no idea that the law can impact the ability to use a brand.  These business owners mistakenly believe that their brand is protected and are shocked when their rights are challenged.  Just because they completed a google search and did not come up with any hits for businesses of the same name doesn’t mean they are safe. Registering your business with a DBA (doing businesses as) or creating a domain name does not protect the brand either.  It is important for small business owners to do their due diligence and protect their brand from the start.  It may seem expensive to commit to this process, but in the end it is worthwhile.  Legal fees from an infringement lawsuit from a big company will be significantly more expensive in the long run.  Circumstances like copyright and trademark infringement are a death sentence for small businesses.

Trademark Protection 101

4 Steps to Protect Your Brand; Doesn’t Sound Too Bad, Right?

At Initiating Protection, our sole purpose is to help small and mid-sized businesses protect their brands.  This includes not only taking our clients through the four steps of Brand Protection, but also helping non-clients become aware of the Warning Signs that their brand is at risk.  Building your brand is your business.  Helping clients secure their rights in their brand is our business.  We translate a brand into a legally protectable trademark and take the lead as the brand achieves the level of legal protection it deserves.

Can I Use My Last Name For My Business?

How Not To Name Your Business

by | Sep 1, 2023 | Brand Protection 101, Education

How Not to Name Your Business

How To Name Your Business

Many companies want a name that means something. To be clear, this is not a problem in the eyes of the law. What is a problem is when you choose a brand that ordinarily describes your products or services.  Last week I mentioned that a brand needed to be distinct. That is, the brand can never be the generic name for the product or service sold under the brand. Also, if the brand describes the product or service sold, you face a difficult road to gain full legal rights in the brand. With all this information presented, you may be wondering how to name your business.

There are at least three ways a brand can be descriptive. The most common way is to consider the ordinary dictionary definition of the brand. If this definition describes any aspect of the products or services, the brand will likely be considered descriptive. For example, let’s consider the brand “Chewy” in connection with cookies. Are cookies ordinarily chewy? The answer is “yes,” which means “Chewy” would be considered descriptive with respect to cookies.

This rule makes sense when you consider that granting legal rights in a brand is somewhat equivalent to preventing others from using the same term on their products. If Chewy were to gain full legal rights to the brand name, all other companies who make cookies would no longer be able to describe their cookies as Chewy to avoid infringement. Examples like this are why the USPTO is very careful before giving exclusive rights to one company.

Where are you from?

There’s nothing like a genuine product. A real OG. Many companies like to show that their product is authentic, and they like to use place names to do this. I mentioned that it is difficult to gain full legal trademark rights in a descriptive term. This remains true when it comes to location-based brand names. Trademark law makes geographic place names difficult to protect, especially if they are geographically descriptive. So, what makes a brand geographically descriptive? There are 3 factors to consider:

1) Its primary meaning is a generally known geographic location
2) Goods or services originate in the place identified in the brand
3) Purchasers would be likely to believe that the goods or services originate in that place.

You may be asking for trouble if you name your company [city name] [item sold]. There are ways to gain the level of distinctiveness you need to fully protect a brand, but it takes time and money.

How To Name Your Business

Who Are You?

Small business owners should be proud of their business and want you to know they stand behind their product or service. Some may choose to show their pride by choosing a brand name that contains the last name(s) of the owner(s). This may not be in their best interest in the long run because surnames, aka last names or family names, are considered descriptive. The following 5 factors are considered when determining whether or not a term in a brand is “primarily merely a surname”:

1) Is the surname rare?
2) Is it the surname of anyone connected with the owner?
3) Does the term have any recognized meaning other than as a surname?
4) Does it have the “structure and pronunciation” of a surname?
5) Is there stylization of lettering distinctive enough to create a separate commercial impression?

Are You In The Clear?

It is important to consider descriptiveness when it comes to how you name your business. You may want to be proactive when it comes to such an important thing as protecting your brand. If you’re still left wondering if your brand may be too descriptive, contacting legal counsel is your best bet. Please feel free to reach out and schedule a free consultation with myself to discuss your rights when it comes to your brand.