Duplicate business name issues

by specialized 15 replies
Hi guys, I am wondering if anyone can offer help clarifying something. I recently bought a WSO that I am in the setup phase to take action with. I came up with a perfect domain name/business name that I became attached to immediately, and when I searched domains it was unregistered (available). I was euphoric, and went ahead and registered the domain---and then realized I forgot to do the other half of that search process: doing a general web search on the name.

I then did the web search and found that there are two instances of this business name appearing on the web! Oops.

One includes "Inc." at the end and is in my home state, but appears to be a dead corporation! Excellent news! The listing I found says:

XXXXXXXX XXXXXXXX Services Inc. was a corporation registered in the state of California. It was a domestic corporation, meaning it was formed, as well as registered, in California. Its articles of incorporation were filed on October 22, 2004. All of XXXXXXXX XXXXXXXX Services Inc.'s powers, rights and privileges in the State of California have been suspended. This could have happened because they failed to file a return and/or pay taxes to the California Franchise Tax Board, or because they failed to make certain informational filings with the California Secretary of State. The specific reason for this suspension can be found by ordering a status report from the Secretary of State.

So I guess I don't need to worry about them.

The other instance is a long-established (15 years) company in Louisville, Kentucky but what's strange is that they are using the name as what appears to be a sort of parenthetical "secondary DBA", sort of an "also known as" type name. I'm guessing that possibly it was their original name from many years ago and they changed it, but are still keeping the old name around in parentheses for the people who are looking for them under it. Like the business above, it does not have a web presence and obviously doesn't want one at all.

By contrast, my business will be based on the web and have a HEAVY web presence. I guess what I'm wondering is, what are the possible ramifications here regarding the KY business. There were obviously already the two businesses in different states using the same name (one with "Inc" and one without) and no apparent conflict between them, but I suspect that there were no conflicts mainly because neither of them desired web exposure.

Do you recommend I register my name with a service mark? Do some of you do this? I'd say the lines are getting increasingly blurred between protecting a business name/identity on a patch of geographical ground (say, an area or region of your state) versus protecting it on the internet.

Thanks for any thoughts.
#main internet marketing discussion forum #business #duplicate #issues
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  • Profile picture of the author Eddie Titan
    I think it would be best to discuss this with a lawyer.

    When I do not want to fork over a few hundred dollars for legal advice, I go to JustAnswer.com and ask away. The lawyers on this website are knowledgeable. They always provide resources, proof, and factual data to back up their advice/claims.
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    • Profile picture of the author JMSD
      I personally would steer clear of using a business name and/or domain name of a company already in existence or which has question marks attached to it.

      I had much the same experience with a domain name that was available as was the company name on Companies House' register, but when I google searched to see if there were any Trade Marks or Registered Names, I came across two companies of the same name - one in the US and one in Australia. Even though I could have gone ahead, I decided against doing so because I didn't wish to confuse my customers, at best, and invite trouble, at worst.

      I found a much better business and domain name after a few minutes' further search which is not used by anyone and has a high volume search but relatively low competing pages.

      James
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  • Profile picture of the author Seth Bias
    Contact a Lawyer indeed don't need to lose money in domains and seo rankings because the business wants you to turn over the stuff to them.
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  • Profile picture of the author travlinguy
    Duplicate business names aren't a big deal unless there is a tradmark involved. Do a search for Apex Pools. There are hundreds of them but only one has the .com. Only one (might be the same as the .com) has the .net. etc. I doubt you need a lawyer for this but if it makes you feel better go for it.
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  • Profile picture of the author specialized
    Thanks all!

    Eddie, thanks so much for that tip. I'll definitely try that site. Does anyone ever want to fork over hundreds of dollars to an attorney? I'll take all the free legal advice I can get, if it's sound.

    It's going to be really hard for me to give this name up because it is so good that it spurs me on and lets me visualize the business. After posting my original post, I searched for the name on the California and federal databases (free online ones). The CA one returned only the dead corporation, no new ones. The negative federal results seemed to indicate that there had been no trademark or service marks registered (at federal level, anyway) for the name ever.

    The only nit in the fur seems to be the KY company, but I don't see how they can be a problem since they (A) don't have any web identity after 15 years in business and (B) are in a different state from me. I should be able to have a business in CA without worrying about a guy in KY if the guy in KY is not doing anything with his name and I get to the web first, no? What if I'm Luigi's Pizza and there's another Luigi's Pizza in NY but I get to the domain luigispizza dot com first? Tough break for Luigi in NY, right? Unless he were quicker to register it as a trademark, then maybe the balance of power shifts again? I'm not sure.

    With regard to its suitability as a domain name, maybe this one of mine could be a little more keyword-like, but I'm not a big believer in that being strictly necessary every time. Probably depends on what the business is. When potential clients first see this particular name, they will be reading an email, not running across it on the web. People learn of businesses and their names (URLs/domains) in a vast array of situations, not only when doing web searches.
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    • Profile picture of the author Kay King
      I'll take all the free legal advice I can get, if it's sound.
      And there's the rub - pretty narly to find out in court the free legal advice wasn't sound advice

      I don't see how they can be a problem since they (A) don't have any web identity after 15 years in business and (B) are in a different state from me. I should be able to have a business in CA without worrying about a guy in KY if the guy in KY is not doing anything with his name and I get to the web first, no?
      What you are doing above is justifying by defining "reasons" that it's OK to use the name. Maybe it's fine. But businesses don't have to race to the web to be allowed to use their business name and a company trademark applies across state lines. Don't talk yourself into a legal hole. Check trademarks and if there's any doubt, spend few bucks for an hour of a specialized attorney's time.

      Finding out exactly where you stand before you spend time and money is much smarter than having a wall fall on you later.

      kay
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    • Profile picture of the author Eddie Titan
      Originally Posted by specialized View Post

      Thanks all!

      Eddie, thanks so much for that tip. I'll definitely try that site. Does anyone ever want to fork over hundreds of dollars to an attorney? I'll take all the free legal advice I can get, if it's sound.
      No problem. However, it is not free advice. It is just much more affordable. The way JustAnswers is setup, allows for professionals in a certain field (like law) to provide advice to people for a lower rate than it would usually cost if you were to walk into a (let's say) lawyers office and take up an hour of their time.

      Originally Posted by Kay King View Post

      Finding out exactly where you stand before you spend time and money is much smarter than having a wall fall on you later.
      kay
      As always, sound advice from Ms Kay.
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      • Profile picture of the author Kay King
        Ms Kay, if you please:p
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    • Profile picture of the author JMSD
      Originally Posted by specialized View Post

      Thanks all!

      What if I'm Luigi's Pizza and there's another Luigi's Pizza in NY but I get to the domain luigispizza dot com first? Tough break for Luigi in NY, right? Unless he were quicker to register it as a trademark, then maybe the balance of power shifts again? I'm not sure.
      You must and will do what you think is best for yourself and your business.

      If I were you, though, I'd buy the domain name that you like so much and then approach the existing business of the same name and offer to sell the domain to them at premium rate.

      But I'd still detach myself from this "inspiring" domain/business name because I believe that prevention of potential damaging legal problems far outweighs any attachment to a mere name. I had my fingers burned, even though I was legally in the right and the other party was forced (by me) to drop their threatened action.

      It was my confirmation name to which I was much attached. Being aware that the name was also in use by a very famous and ancient university college in Oxford, I did what any wise entrepreneur would do. I consulted a solicitor who advised me that whilst the college may not like it, they wouldn't have a legal leg to stand on, particularly if I didn't set up business in Oxford.

      I started my bricks and mortar company in another city, altogether and was involved in a business as diverse from their activities as one can imagine. No one in their right mind would have confused my company with that of the august college.

      Yet, after three trouble-free and glorious years of trading and just on the brink of clinching a deal with a venture capital company, I received a letter on a heavy parchment paper, from an army of barristers acting for this college with a "Cease and Desist" notice. Not only that, they claimed that I was "passing off" as their client's business and was bound to cause confusion in the minds of their international and national student base.

      Not only that, they demanded that I hand over to them all my client data, my applicant data, all my invoices, all my bank statements, all proceeds from sales to date - you name it, they demanded it.

      Naturally, I called up my legal chap and demanded that he "sort it" but it was not until the president of the college kindly agreed to see me for an informal chat (which was very cordial, incidentally) was the matter resolved to our mutual satisfaction and action dropped.

      Of course, I continued to use the name (because he admitted that the college did not have "exclusive right of the use" of the name) but as my company was due to be incorporated as part of the venture capital investment agreement and I'd already decided to alter the name slightly to describe more accurately our proposed new business expansion, the college was happy to say no more on the subject. I received written confirmation to that effect within a couple of days of that meeting.

      But. The cost to my peace of mind and to my business during those eight long and stress-laden weeks was incalculable. Since I was the major revenue generator, my company's sales dropped by 75% during that time and beyond (it takes time to build up momentum) and it very nearly cost me the investment deal I was working on.

      Even though the college had no right to the claims made against my company, the cost to my company, even before the matter went to court, was more than I would have been prepared to envisage paying in lost revenue and peace of mind, however justified I may have been in using my own name for my business.

      So I speak from experience when I say, if in doubt, DON'T!

      James
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  • Profile picture of the author specialized
    Thanks everyone.

    So is it a case of having to come up with a business name that no one else has, anywhere in the country? That could be very difficult in itself. The harder part is that I'm supposed to come up with something that not only is no one else using, but it also has to be a good "keywordy" domain? That is a very, very tall order.

    Perhaps I should contact the KY and tell them my plight. Maybe since I'm from another state, and since they obviously don't give a poop about the web, they'd get a laugh out of it and end up giving me a written statement that they won't interfere with my use of it. If I had the extra $300-400, I would just register the service mark if I could.
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    • Profile picture of the author JMSD
      Originally Posted by specialized View Post

      Thanks everyone.

      So is it a case of having to come up with a business name that no one else has, anywhere in the country? That could be very difficult in itself. The harder part is that I'm supposed to come up with something that not only is no one else using, but it also has to be a good "keywordy" domain? That is a very, very tall order.

      Perhaps I should contact the KY and tell them my plight. Maybe since I'm from another state, and since they obviously don't give a poop about the web, they'd get a laugh out of it and end up giving me a written statement that they won't interfere with my use of it. If I had the extra $300-400, I would just register the service mark if I could.
      It's not as "tall order" an order as you may think. Just spend a few hours keyword researching until you find something that a) describes your company's operation; b) has large volume searches and c) has relatively low competing pages.

      There's nothing stopping you using the name that you like, even if there are other entities in the same/different state or outside the US with the IDENTICAL name (provided they are not Trademarked or Registered).

      BUT... you have to decide whether or not you are prepared to accept the flak that MAY result if those companies decide to take action. Even if they have no just claim, can you afford the time and money to fight that claim? Would you be prepared to lose all the hard work you put in establishing your website business only to see it go down or have your business stall while you are firefighting?

      These are questions any business person needs to ask themselves before embarking on using identical company names, even if the orginal company didn't have the foresight to buy the domain name for themselves.

      James
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  • Profile picture of the author specialized
    - ignore - sorry, double-posted -
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  • Profile picture of the author Tadresources
    Contact a lawyer and find out what trademarks the other companies have for example toys r us always threaten to sue anyone that uses the r us brand even if they set up their business before them. So even part of a company name can be trademarked.
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  • Profile picture of the author specialized
    Hi all,

    Sorry to revive an oldish thread, but I'll be danged if I'm not in the same situation once again.

    This stuff is very frustrating to me.

    I have a great domain name that I want to use, and it is a MIRACLE that the dot com of it isn't already taken, due to the highly descriptive and kinetic nature of the first of the two words in question.

    I don't want to reveal the actual proposed name, so I'll give you a substitute name that allows you to tune in to the story. The first word is a noun that is also used as an adjective... hmm, it's pretty unique in that way and I can't think of a similar word to it here so let's just go with a straight adjective. Let's say it's "fantastic." The second word is a present participle, a verb ending with "-ing" that describes the service that will be offered with this business/domain. Let's say it's "accounting."

    Imagine then that I want fantasticaccounting dot com. So, learning from my last pickle, I go to the US Patent and Trademark Office website and its TESS search and look up "Fantastic Landscaping" and it finds no result.

    Then I immediately go to Google and search "fantastic accounting" and immediately find a web business that is at "fantasticaccountingservices.info." That business clearly does not have the exact same name, but it's very similar because they've simply added the word "services."

    Notice they are at dot info instead of dot com, which tells me maybe they're not into spending much money protecting or registering their name.

    At first I thought maybe they used dot info because the dot com version was taken, but I checked it, and it's not even taken...!

    Okay, so... my only close competition for this name not only hasn't registered it as a service mark or trademark, but they didn't even secure their domain name as a dot com when they easily could have (and still could). Am I really supposed to let someone that lackadaisical stand in the way of my using a really nice business name and domain? Really...?

    The way I see it, if they can't even be bothered to secure their own dot com domain, there is no way they will ever have the wherewithal to complain to me about using a similar name, much less to sue me over it.

    Can anybody relate here, or am I truly out of line?
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  • Profile picture of the author thesnakeman
    Here's a little more advice from someone with experience about trademarks and the like.
    In many jurisdictions, there are registered and unregistered trademarks.
    The registered ones have been mentioned in the posts above.
    BUT so far the unregistered ones have not been dealt with much at all.
    Anyone trading under a given name can claim trademark status to the start date of their trading if they want and if they seek to get into a dispute with a new entrant in the market.
    The older trademr can use fair trade laws against the new entrant, and this is often a criminal offence, so in other words, avoid using others names, even if not registered as trademarks.
    All the best
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