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[Starhawk]

Hi!

I am in the process of coming up with a name for a small company. Right now, we are considering going with a very common word for the name. A good example would be "Circus" or maybe "Picnic".

This single word was available as a corporation and DBA name in my state, and we have already reserved it in case we decide to move on it. I had the trademark division search for the word and apparantly only one pulled up, similar to "Horse & Picnic".

There are several other small companies in the same business category as we are that use the word as a part of their name. Such as "Picnic Galore" "Picnic Blankets" or "Picnic Strategies".

Are there any things I should watch out for when trying to use a common name like this? Am I at risk of being sued using a name like Picnic when other businesses in the state use this word as part of their name while conducting a similar business?

Thanks for any help you can provide!

-Cameron

[JSonnabend]

Whether or not a word is "common" in some abstract sense is virtually meaningless in the trademark world.  Ask yourself how much more common could the word "apple" be?  Doesn't mean it's a bad choice for a computer brand.

Your question hints at another, more important aspect of branding, namely, will my mark be confusingly similar to someone else's pre-existing mark?  That's one of the two most important questions in the trademark game, and you probably should seek to answer that satisfactorily before proceeding.

- Jeff

[Starhawk]

I see what you are saying, Jeff.

This is a newbie speaking here: What happens when a company starts in one state with a name (a common word, highly probable that it is taken in another state), then looks to branch to other states where that company name has been taken? Can you not practice business in that state until you DBA under a different name?

[Isaac]

I see what you are saying, Jeff.

This is a newbie speaking here: What happens when a company starts in one state with a name (a common word, highly probable that it is taken in another state), then looks to branch to other states where that company name has been taken? Can you not practice business in that state until you DBA under a different name?

Strictly speaking, DBA names and other company names are not necessarily trademarks although they may be used that way.   You'll have to look at the involved states requirements for registering DBA names to answer your question.   I don't know what kind of search is involved with registering such a name, but I do know that in at least some cases in some states, no rigorous search is involved unless you are forming a state registered entity like an LLP, LLP, etc.  

But even absent any kind of trademark infringement, or DBA name registration issue, using a name that really does not specifically identify your company, that looks like a name used by your competitors or that anybody is free to use might not make good business sense.

[JSonnabend]

Trademark rights accrue to the first to use a mark, limited by the geographic area in which the mark is used (loosely speaking).  A federal registration extends those rights nationally (again, loosely speaking).  So to answer your question, if you expand into another geographic area where a senior user of a confusingly similar mark exists, you likely won't be able to use your mark there.  

To avoid this, I conduct comprehensive clearance searches for my clients, preferrably before the begin use of a mark.  These searches search not only the federal registration database, but several other databases that contain IRS business name records, business directory listings and state tm registrations, among others.

Isaac is correct in his guidance on dba names, llc names, etc.

- Jeff