You've snagged a great domain name and now you're ready to incorporate.
All you need to do is add "Inc." to the end of your domain name, right?
Unfortunately, it's not that simple.
To avoid problems later, take a few steps to make sure the name you've chosen for your Web site and business is both available and protected.
When naming your Web business, consider at least two other name registrations besides domain name registration:
- State and local registration requirements for operating a business under a particular name.
- Federal and state trademark registrations of your domain name and/or business name.
Here is an overview of the steps to take to make sure you've named your business correctly:
Decide on the Name
If you're going to use your domain name as a corporate or a business name -- or as part of that name -- make sure it is available for use in your state.
You can do this by contacting the secretary of state or division of corporations in your state. State the name you want to use for your business, and an official will tell you whether another business uses that name. This way you can find out whether your state is likely to reject your filing.
If there is a conflict with another business name in your state, you might still be able to come up with a variation of the name the state will accept as long as the other company does not have prior trademark rights, which you can determine by following the steps described later.
Remember, many states have naming guidelines; some words might be mandatory and other words might be prohibited. For example, a state may prohibit a business name that includes the word "bank" except when used for bona fide banks. Most states require a company's name to include the word "corporation," "incorporated," "corp." or "inc."
Register Your Business
You automatically register the name of a corporation or limited liability company (LLC) in a state as part of the process of incorporating or forming the LLC.
If you decide on a name but are not ready to file incorporation papers, you may reserve the name by filing a reservation of name form with the secretary of state in the state in which you are incorporating or forming the business.
Sole proprietorships and partnerships using a business name other than its owner's (or owners') full name (or names) must register an application for a fictitious name. Often this filing is done at a state or county level.
If your name is Jane Smith and you want to call your business Jane Smith Bookkeeping (www.janesmithbookkeeping.com) you do not need to register the name. However, if you want to call it "www.myaccountant.com," you will need to register the name as a "dba" -- doing business as.
Establish a Trademark
Successfully registering a domain name as your business name neither gives you trademark rights nor guarantees use of that name won't infringe on someone else's trademark rights.
Trademark rights arise through using a term or symbol in connection with a product or service -- or, in the case of a service mark, the connection is with the source of the product or service. Certain additional benefits can be obtained by also registering the name as a trademark.
Ask yourself if your domain name will be used to identify a particular product or service, or if it will merely state the name of your company.
For example, "Amazon.com" is used as a service mark because it identifies a particular Web site and the services and products it offers.
However, if your business is a holding company called QRS Holding Co. Inc., with the domain name "qrsholdingcompany.com," you are not likely to use this domain name as a trademark or service mark.
Domain Name as Trademark
Most people prefer to use their domain name as trademark or service mark. If you think you might do this, first make sure your domain name is available for this purpose. This is different from establishing availability as a corporate or business name.
To determine whether a name is available from a trademark perspective, make sure nobody else is using it and that nobody else has registered intent to use it.
You can conduct a free screening at the U.S. Patent and Trademark Office home page, or at other online trademark sites, such as Thompson & Thompson. However, don't consider this search the final word; it will only reveal whether an application is on file.
The real key is learning whether anyone is using the name in a way that would be confusingly similar to your planned use, such as for a similar product or service.
Conducting a comprehensive search using trademark search services -- or your own diligence -- will accomplish this. Search services typically cost a few hundred dollars and take several days to complete the task. Your lawyer can order this search for you.
The primary risk in not conducting a search is the lost investment in marketing materials and in building your Web site when you find out someone with a very similar service or product is already using your name.
The result might be that you have to stop using it. Worse, you might have to pay damages if the other party can prove you were willful or careless in your infringement.
If your domain name is available for use as a trademark or a service mark, consider filing a federal trademark application with the U.S. Patent and Trademark Office.
This action provides you with certain advantages and protections, including the option of recovering attorney's fees if you need to sue someone for infringement.
Although you can file this application yourself, it is generally preferable to retain an experienced trademark lawyer to make sure it is done correctly.
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