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Protecting a business name

A reader from a western state started a blog for her genealogy business using her first name and a descriptive phrase. You know the type of phrase — “Myname, the High Plains Genealogist” would be an example.

And, as often happens, immediately ran into trouble. “I recently received an email requesting me to change the name of my blog,” the reader wrote.

The email told her that the descriptive phrase she was using was registered by another professional genealogist in the state in which they both lived. So, the reader asked, “Why do I need to change the name of my blog? I cannot see how it has anything to do with her?”

Now it may seem like a non sequitur1 to reply this way, but here’s The Legal Genealogist‘s answer: have you joined the Association of Professional Genealogists (APG) yet?

And why isn’t that a non sequitur? Because the one-word answer to the reader’s question is trademark. And there’s a whole article in the just-published December issue of the Association of Professional Genealogists Quarterly (APGQ), written by my friend and Rutgers Law School colleague John R. Kettle III, that answers this and so many more questions we may all have about trademark.2

Now a quick reminder: a copyright “protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture” but not “names, titles, slogans, or short phrases.”3 A registered trademark, on the other hand, helps protect a “word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”4

Among the things we can learn from John Kettle’s article is the little-known fact that — unlike copyrights, which can only be issued by the federal government today5 — trademarks can be registered with either the U.S. Patent and Trademark Office (USPTO), for broad protection across the country and even the world, or with an individual state:

In the United States, a business owner who uses a mark may want to register the mark federally with the USPTO or within a state (if there is no intent to engage in business outside the state).

State registration is generally a simpler process and is less costly than filing a federal application with the USPTO. State registration provides legal protection to the mark, but only within the borders of that state, and constructive notice of the use and ownership of the mark throughout the state. Fees for state registration can be as little as ten dollars in some states; most are well under one hundred dollars.6

Since the blog-writing genealogist is a resident of the state in which the other professional genealogist had trademarked the name, the blog writer would be violating that state’s law and infringing the other professional’s state trademark if she kept using the name. This is, in fact, the “clearest case” of trademark infringement: “where a later user simply … starts doing business online as, say, Blossom Genealogy, when there is already a business out there that is Blossom Genealogy®.”7

Once she understood the issue, the blog-writer did change the blog name. But it’s a problem we all might face, any time we thing about using a business name for our genealogy research. So how do we know what the law is in this seemingly complex area?

Step one: Join APG. Seriously. Even if you’re not thinking you’re going to take clients now. The benefits of membership include a subscription to the APG Quarterly, where this article appeared and where so many articles of general use to genealogists of all flavors appear regularly, and a members-only area where archived webinars (like my webinar on copyright law) can be found. It’s worth the membership dollars for those two benefits alone. And once you do join, read “A Trademark Primer: The Rights and Wrongs” in the December APGQ.

Step two: Check out the information available on the USPTO website. Among other features, this website will let you search for trademarks to see if a name you’re thinking of using is already trademarked under federal law. The search page can be found here or from the home page of the USPTO under the link “Trademark Search [TESS].”

Step three: (here’s the kicker) Always check the law in the state where you live. There’s a whole page on the USPTO site of links to state trademark offices around the country where you can get more information about your own state’s protection. You’ll want to see what’s required for trademark registration in your state, and check whether a name you’re thinking about using has been registered there.


 
SOURCES

  1. A non sequitur is a “statement that does not follow logically from what preceded it.” The Free Dictionary (http://www.thefreedictionary.com : accessed 21 Jan 2013), “term.”
  2. John R. Kettle III, “A Trademark Primer: The Rights and Wrongs,” Association of Professional Genealogists Quarterly (December 2012, 183-186).
  3. U.S. Copyright Office, “What Does Copyright Protect?” (http://www.copyright.gov : accessed 22 Jan 2013).
  4. U.S. Patent and Trademark Office, “Trademark, copyright or patent?”, Trademark Basics (http://www.uspto.gov/ : accessed 21 Jan 2013).
  5. See 17 U.S.C. § 301(a), as adopted in 1976. This provision changed the law that previously allowed state copyrights so that now there is a single, preemptive federal statutory system.
  6. Kettle, “A Trademark Primer: The Rights and Wrongs,” at 185.
  7. Ibid. at 186.
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