When starting and naming a new Colorado LLC, consider whether the new business’ name is a registrable trademark. There are other considerations, too, but this one is a bit more complex.
First, a bit about trademarks. A trademark is a distinctive word, phrase, or image that you use in commerce. It is established by actual use; that is, you don’t create it by registering it with the state or with the feds. For example, if you have a new toy called the frrrrshink! (derived from the sound it makes when dropped), the way to get to keep other people from creating and selling a similar product with the name frrrrshink! is to sell yours first. This applies not only to product names but also to the names of services and businesses. After you’ve established the mark, then you can register it. (There are exceptions, but discussing them would take us off track.)
Also, keep in mind that you need something distinctive. Pulling from our example above, if you named your new toy “toy”, you have not created a trademark because that’s just a generic description of the product. There’s a whole scale of distinctiveness that you need to consider in this regard. The key point is this: It’s not hard to come up with a fanciful (or as I like to say, mutant) name for your new business, and fanciful names are easy enough to establish as trademarks.
Trademarks can be registered with either the State of Colorado via the Secretary of State’s website or can be registered with the United States Patent and Trademark Office (the USPTO) or both. Generally speaking, registration with the State isn’t all that valuable, so I’ll keep my discussion limited to searching the federal registry. Keep in mind, though, that you can perform a similar search of the State’s registry on the Colorado SecState’s Records Search page.
Important note: Even if you plan never to register the name of your Colorado LLC in a trademark registry, it is still a good idea to perform at least a basic search. You may have no interest in protecting your potential mark, but someone else may have an interest in protecting theirs. Failing to make sure you do not infringe on someone else’s mark can be costly.
I have discussed elsewhere how you should go about establishing and keeping track of your trademark, but here’s how you use the database at the USPTO to make sure the name of your new Colorado LLC is a registrable one:
1. Search the USPTO Database.
This can be time-consuming, especially if you have not come up with an abstract or “mutant” name for your new Colorado LLC. Here’s how you do it.
Go to the USPTO’s Trademark Electronic Search System (TESS) page (navigate to the middle of the linked page and click “TESS”). It will look something like this:
Click on “Basic Word Mark Search (New User)”. The new screen will look like this:
Leave the default selections as they are and type in your prospective company name. Press “Submit Query”.
If you’re lucky, you’ll get a result that says, “No TESS records were found to match the criteria of your query.” That means that your Colorado LLC name does not conflict with any registered trademark. Be careful, however, to search several variants and alternative spellings of your name just to make sure.
If you get a response with several results, you have two options. First, you could go through every one of them to make sure that the owners of those marks sell goods or services in a different class than what you plan to sell. Second, you could change your prospective company name. Here are the (partial) returns for a basic search for the word “dual” which could be part of your LLC name:
Searching through 1500 records can be a pain, but it might be worth it to you, depending on what you plan to sell. Determining whether another mark is valid for the same class of goods or services for which you plan to use your mark is a tricky business. If you’ve got a prospective name that (A) matters to you quite a bit and (B) conflicts or might conflict with someone else’s mark, this is an area where you might want to engage legal counsel for some assistance.
2. Search the web (and elsewhere).
After you’ve cleared your Colorado LLC’s name through the TESS database, perform the same kind of search on the web, generally. Do not settle for a cursory glance through Google. Instead, put some time in here, trying several variants of your prospective company name to see if there is anything similar at all out there. You might also try different search engines or even looking through phone directories and advertisements if you want to be extra thorough.
Remember, a trademark can be established by someone else and not be registered anywhere, and it is your responsibility to make sure that you are not infringing on someone else’s mark, regardless of whether it is registered.
3. Settle on a name.
All right! You have found your domain name, cleared your prospective Colorado LLC name through the SecState’s site, made sure your name is memorable, and you have cleared it through the TESS database. It is time to settle on your name and to take the next steps, and we will address those in our next post.