What’s in a name®?

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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10 Responses to What’s in a name®?

  1. Great post. Important topic. I guess this falls under “ignorance of the law is no excuse” and this post exemplifies just how easy it is to unknowingly go awry.

    Marian

  2. Do you HAVE to register the name? What if you have been using a business name for years but never registered it and then someone comes along and decides to use it (and register it). Can you just show that you have been using it for X years or must it be registered?

    • Judy G. Russell says:

      If you don’t register the trademark, then generally it has little if any legal protection. The concept here is one of notice: how is anybody else supposed to know if you have a name you want to protect if you don’t register it?

  3. Magda says:

    Judy, If I have been on hiatus from record searching since I started school last year, does that mean I can still join APG ? I still research heavily for people when I can but more on a volunteer basis because I love it.

    Magda

    • Judy G. Russell says:

      Magda and all, you do NOT need to be doing heavy client work in order to be a member of APG. Quoting the APG website: “APG is an independent organization whose principal purpose is to support professional genealogists in all phases of their work: from the amateur genealogist wishing to turn knowledge and skill into a vocation, to the experienced professional seeking to exchange ideas with colleagues and to upgrade the profession as a whole. We invite you to join today.”

  4. Susan Clark says:

    A blog has a presence far beyond state borders. Is state registration sufficient?

    • Judy G. Russell says:

      If you’re looking to protect your business name beyond your state’s borders, you must seek federal trademark registration. State trademark protection won’t do; your state law will only control what your state’s residents can and can’t do. But if most of your business is in your state, and you don’t really mind that there’s also someone operating with the same or a similar name half a continent away, you may not need (or want to bother with) protection beyond your state borders.

  5. Thanks for the kick in the pants Judy. I went through the process of having a trademark search on my business name done prior to filing my LLC paperwork. It was always my intent to finish the process by filing for trademark protection. The funds seem to always find other places to go though, like IGHR. Must reprioritize this expenditure.

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