When Competitors Incorporate Your Name In Their Online Marketing: Tipsy Elves’ Approach May Provide Some Sobering Guidance

Internet advertising continues to present special legal challenges for trademark owners.  In particular, courts are still wrestling with the question as to whether an online advertiser may use a competitor’s name to promote a competing product.  Is it legal to use a competitor’s trademark in keyword searches and online advertising text through such platforms as Google AdWords?

Let’s imagine that you enter the name of your company–Bob’s Baubles—into a Google search box—just to make sure that those Google AdWords you paid Google for are working properly.  Yes, there’s your ad right at the top of the results list:

bobsbaubles.com – Bob’s Baubles® –Official – #1 in Baubles for every occasion!

AD www.bobsbaubles.com 555-555-5555

Buy fabulous baubles for every occasion from Bob’s Baubles!

Great!  Your ad is right at the top.  But wait a minute, what is that next ad that reads:

Bob’s Baubles – Every imaginable bauble – baublesandmore.com

AD www.baublesandmore.com

Large collection of fabulous baubles!

Who the heck are “baublesandmore” and how can they use the words “Bob’s Baubles” in their ad?

The answer:  they are your competitor, and they have paid Google Adwords for “Bob’s Baubles” as a keyword that will cause their advertising to appear more prominently in search results.

ow did this happen?  How does Google AdWords work?  In addition to the regular list of search results generated by Google’s proprietary algorithm, Google also displays as many as three paid advertisements.  Google’s AdWords advertising platform allows sponsors with AdWords accounts to bid on keywords that place their ads in a primary position above regular search results.

Google’s standard terms and conditions require that advertisers assume the responsibility for ensuring that their ad content does not violate any applicable laws.  Yet, at the same time, Google provides a keyword tool that actually populates “suggestions” that sometimes include third-party trademarked terms.  In spite of Google’s own research indicating that use of third-party trademarks might confuse internet users, Google has not undertaken any express policing role in the use of these trademarks in actual advertising text.

Google has been sued by trademark owners over 50 times in the last ten years, but trademark owners have rarely won, in part because, courts have accepted Google’s contention that it is the advertiser, and not Google, who is ultimately responsible for the legality of the advertisement.

As a notable, albeit limited, exception to the foregoing, the Fourth Circuit Court of Appeals in Rosetta Stone vs. Google, Inc. 676 F.3d 144 (4th Cir. 2012) refused to dismiss claims against Google for direct infringement, contributory infringement and dilution of trademark.  The relevant facts are as follows:

Plaintiff Rosetta Stone grew from a small, family-owned business in 1992 to a publically traded, industry leader in online language-learning products with almost 2000 employees.  Rosetta Stone owned and used several registered marks—ROSETTASTONE, ROSETTA STONE LANGUAGE LEARNING SUCCESS, ROSETTSTONE.COM, and ROSETTAWORLD—in marketing its products in various media including internet, television, radio, print and kiosks in public venues.  The Court noted that Rosetta Stone had a very high level of recognition in both the domestic and international language learning market.  Rosetta Stone had itself advertised via Google since 2002.

Rosetta Stone alleged that it suffered from considerable consumer confusion since 2009 when Google AdWords began allowing competitors to use third-party trademarks within advertising text.  Rosetta Stone presented evidence that not only was it likely that consumers would be confused by the use of their trademark in ads for other language-learning products, but that in fact consumers had been confused.  They reported 190 cases of counterfeit products being sold by competitors under the Rosetta Stone name in the first seven months after Google’s policy shift.  In addition, Rosetta Stone presented testimonials from five sophisticated, internet-savvy consumers who had thought they were buying Rosetta Stone products but instead bought counterfeits.  In spite of Google’s claims that confusion was unlikely, even two of Google’s in-house trademark attorneys, when shown search results for the keyword “Rosetta Stone”, were unable to determine which were links for authorized dealers of Rosetta Stone products.

The Fourth Circuit held that the trial court erroneously dismissed Rosetta Stone’s claims, finding that whether Google was liable for dilution of Plaintiff’s mark was a triable issue of fact.  However, as the case ultimately settled, there never was a final judicial ruling on the ultimate question of actual infringement by Google.

More recently, on May 2, 2017, Tipsy Elves, LLC filed suit in the Southern District of California against Ugly Christmas Sweater, Inc. (“UCS”), alleging that UCS had used Google AdWords to generate sponsored search results that included “Tipsy Elves,” for which the Plaintiff held a federal trademark registration in Class 25 clothing, as the lead phrase in the ad-captioning for UCS’ clothing products.  Here is the graphic from Tipsy Elves’ filed Complaint:

Tipsy Elves filed a dismissal without prejudice on June 16, 2017, suggesting that the case has now been settled, and perhaps bolstering the case for taking a more direct approach in addressing a competitor’s alleged infringing use of one’s mark.

So what can businesses do to protect themselves from online infringement?

  • First, it is highly advisable to procure one or more federal trademark registrations for your name and other valuable marks. Federal registration provides many procedural and substantive advantages, and lacking a registration often proves to be a non-starter when contacting third-party ISP’s and social media platforms.
  • Second, a business should seek to use its mark as widely and prominently as possible in a non-descriptive, branding fashion. This includes securing domain names and social media tags.
  • Monitoring the internet and social media is also important. Document any infringement on a regular basis.  One way to do this is by making and saving date-stamped screen shots.
  • Submitting a takedown request with a third-party host may be helpful in some instances.
  • That said, perhaps the most effective approach is the one taken by Tipsy Elves, namely, to contact an alleged infringer and press the matter directly.

Rob Monath, ww.robmonath.com, is a copyright and trademark attorney based in Raleigh, North Carolina. He helps his clients develop and protect online proprietary content.  This article is for general purposes only and is not intended as a source of legal advice.

Can The Episcopal Church Save Its Name?

I am both an Episcopalian and a trademark attorney.  Frankly, I never thought that there would be much of a connection between the two.

However, trademark law is at the crux of the federal lawsuit, vonRosenberg v. Lawrence, filed in South Carolina federal district court, Case Number 2:13-cv-587-CWH, with a reported appellate opinion at 849 F. 3d 163 (4th Cir. 2017).

In its February 21, 2017 reported opinion, the Fourth Circuit addressed a procedural aspect of the case, namely whether an existing separate South Carolina state action and the federal action are “parallel,” or not, which in turn determines whether the federal suit may proceed at this juncture.  Suffice it to say that the matter is presently in one heck of a procedural vortex.

What is captivating, in more general terms, is the focus on trademark law and the implications for the “Episcopal” name and “brand,“ as outlined in the federal complaint.

The federal suit was originally brought by Bishop Charles G. vonRosenberg, who was appointed by The Episcopal Church, against Bishop Mark Lawrence, who has led a disaffected South Carolina out of The Episcopal Church that calls itself the “Protestant Episcopal Church in the Diocese of South Carolina.”  The PECDSC joined the global Fellowship of Confessing Anglicans in 2013.

The amended complaint in the federal suit, filed on March 27, 2017, alleges Lanham Act violations that are rooted in basic federal trademark law.  For example, specific allegations from the complaint include the following:

 “The Episcopal Church” is a national brand that is well known by the general public in every state in the country, particularly by consumers of religious services.

The Episcopal Church owns and controls its national brand. The Episcopal Church owns and controls a proliferation of federal trademark registrations that include various uses of the dominant word “Episcopal” in connection with religious services, including the following federal trademark registrations: … Mark: “The Episcopal Church” Reg. No: 3,195,455R, Reg. Date: January 9, 2007; Goods and Services: Religious services, namely, ministerial, evangelical, and missionary services.…

The Episcopal Church’s rights under its federal trademark registrations and the common law include the right to prevent the unauthorized use of confusingly similar marks in connection with confusingly similar services.

The Episcopal Church authorizes its dioceses, bishops, clergy, parishes, and parishioners to use its national brand, its marks, and related or similar marks, to advertise their authority in and/or affiliation with The Episcopal Church and with each other, and that the nature and quality of their services are consistent with those prescribed and sanctioned by The Episcopal Church.

In terms of relief, the Plaintiffs have asked the Court, in part, to “immediately and permanently enjoin Bishop Lawrence and those acting under his direction and control and all others acting in concert and participation with him from…representing by any means whatsoever, directly or indirectly, that Bishop Lawrence is affiliated with or connected to The Episcopal Church or its diocese in South Carolina.”

It would seem to go with without saying that these cases may have tremendous national implications for The Episcopal Church that transcend the dispute in South Carolina.

As an Episcopalian, my hope certainly is that the governing body of The Episcopal Church (The General Convention), if it has not done so already, becomes actively involved in the trademark aspects of this matter, vigorously asserting and protecting these intellectual property rights in its name, which would seem to be of incalculable value and importance compared to the tangible assets in dispute in the South Carolina state court action.

FTC-Based Claims Raised in Fast Forward Suit Potentially Yet Another Shot Across The Bow For Online Influencers, Endorsers, And Marketers

A lot of attention has been paid recently to the warning letters issued by the Federal Trade Commission to a number of prominent online “influencers.” The letters addressed advertising disclosure requirements under the FTC Endorsement Guides (the “FTC Guidelines”). Essentially, under the FTC Guidelines, social media influencers must be very careful to clearly and conspicuously disclose whether there is a “material” connection between the influencer, as endorser of the product, and the marketer of the product under certain detailed scenarios.

Now the FTC Guidelines, and the restrictions therein, have been cited and incorporated into a Complaint filed by Fast Forward Academy in Fast Forward Academy v. Welker, et. al. Case 6:17-cv-00783-GAP-TBS, in the federal middle district of Florida on May 2, 2017.

According to its Complaint, Plaintiff Fast Forward markets and sells professional testing preparation courses used for accrediting CPA’s and other professionals. Fast Forward claims that Defendants allegedly operated websites where reviews of test preparation products were influenced by affiliate marketing commissions. Fast Forward claims that, after it formally terminated its affiliated marketing arrangements with Defendants, its product reviews changed from positive to negative and its rankings dropped. Fast Forward’s complaint seeks redress for alleged violations of Section 43(a) of the federal Lanham Act, defamation and unfair and deceptive trade practices under Florida state law.

Of particular note, Fast Forward contends that Defendants’ affiliate disclosures on its websites do not comply with the clear and conspicuous display requirements mandated under the FTC Guidelines.

The attempted yoking of the FTC Guidelines to private causes of action by Fast Forward would seem to warrant close monitoring of this case by the online community as litigation progresses.

Hey, Wasn’t That You…? Images, Videos and the Need for Appearance Releases Online

Above: The scene of my reputational demise.  [Public Domain Image]

 

We are clearly at a crossroads regarding rights of publicity, copyright and online media.  Anyone who has seen the new movie, “The Circle,” might think that we have actually passed the point of no return, at least with respect to privacy and the ability to protect one’s reputation.

Like many of us, I have had the misfortune of having some past conduct or activity resurrected and shared later at a most inopportune time.  One day when I was 15 and away at boarding school, three of my closest friends burst into my room and hung me out of an upper story window by my legs.  Understandably, I rather loudly and profanely implored them to bring me back inside, a request they eventually complied with.

There were no immediate reputational consequences for me from this public “outing.”  It would be almost a year later, as I was concluding my initial remarks as the new house president to the residents, that a hand would shoot up in the back from a new arrival – “Hey, wasn’t that you being hung out the window during my campus tour last year?  You were really cursing and screaming.  My dad asked our tour guide what the heck was going on, but he refused to acknowledge that the event was even occurring!”

Perhaps the better course, when confronted at our meeting, would have been for me to deny the incident ever happened as well.  However, I had already turned beet red and essentially acknowledged that he was correct – “Yes, ‘twas I indeed,” I meekly responded.

And with that curt admission, needless to say, my efforts to exude leadership and authority as new house president were instantly and indelibly eviscerated.

Thank goodness the only documentation of this event was anecdotal.  Imagine today in the era of smartphones, Facebook Live and YouTube, how much more broadly and permanently my demise would have been memorialized.

Models and actors put their reputation at stake every time they stand in front of a camera.  It is common to learn of actors cringing over their early work as their careers develop.

So, this raises the question, how much control do individuals have in protecting their reputation online? And as an inverse corollary, how concerned do media companies such as producers and publishers, as well as regular businesses, non-profits, local governments and academic institutions, need to be with these issues?  The short answer is that, while individuals have very limited control, it nevertheless behooves any entity that promulgates online content to proceed thoughtfully and deferentially regarding these matters.

The law sadly, as is often the case, provides little clear guidance.  A pair of recent opinions from the Ninth Circuit, in particular, underscore the inherent complexities and seeming inconsistencies in balancing the respective rights and obligations of those whose pose or perform versus those who photograph, film or publish.

In Garcia v. Google, a walk on actress actually received death threats after her lines were overdubbed, transforming her brief performance “into part of a blasphemous video proclamation against the Prophet Mohammed.”  Nevertheless, the Ninth Circuit declined to sustain an injunction against Google enjoining dissemination of the video based on copyright infringement, holding that an actor’s performance is not separately copyrightable. The Garcia Court did note that ‘[p]rivacy laws, not copyright, may offer remedies tailored to Garcia’s personal and reputational harms.”

Yet, on April 5, 2017, the Ninth Circuit, considered this issue again in Maloney v. T3 Media, albeit in a slightly different context.  In denying any remedy to student-athlete plaintiffs for the unauthorized licensing of photographs of them, the Ninth Circuit held that the plaintiffs could not assert a publicity right claim, because state law publicity rights (which emanate from privacy laws) are preempted by federal copyright law when “a likeness has been captured in an artistic work [i.e. a photograph] and the work itself is being distributed for personal use,” even when such “personal use” distribution occurs pursuant to a commercial license for remuneration.

While the Maloney Court sought to distinguish its holding from other right of publicity cases by distinguishing between commercial and non-commercial, personal use, it is completely unclear how Maloney is to be reconciled with Garcia.  The Maloney Court never mentioned the Garcia case. And other jurisdictions, besides the Ninth Circuit treat these issues differently.

Consequently, the most prudent course for anyone disseminating photographs or videos online, is to at least consider whether obtaining an appearance release from the subject of the film or photograph may be warranted.  For example, you’d better not post a video of me online without my permission the next time somebody hangs me out of a window without my permission!

Final note:  I have posted a sample appearance release here: http://rightlicenseandprivilege.com/appearance-release/ This article is the first in a series addressing copyright, rights of publicity and best practices.  More on this topic to come soon.

 

 

Naming Your Start-Up Company

Selecting a name for your new start-up company is one of the most important initial decisions that you will make. Why? If you simply select a name without performing any clearance, there is a good chance that another business will contact you and demand that you stop using your name because it is too close to the name of that other business or to the name of similar products or services offered by that business.

You may also encounter problems when you try to incorporate your company.

In many states, there are two (2) principal requirements for registering a corporate name with the Secretary of State, which are that:

  1. The name must not contain any language stating or implying that the corporation is organized for any purpose other than a purpose that it is lawful and permitted by its articles of corporation.
  2. The name is distinguishable upon the records of the Secretary of State from the name of any domestic corporation or the name of any foreign corporation authorized to transact business or conduct affairs in the state.

In essence, these corporate restrictions require you to perform at least some minimal pre-screening of a corporate name.

In practice, a  Secretary of State typically will accept even slight variations for purposes of satisfying the above “distinguishable upon the records” requirement. Therefore there are many  corporations with similar names.  Assume, for example, that “XYZ Corporation” is already listed .  If you wanted to incorporate as “XYZ Ceramics Corporation,”  the addition of the word “Ceramics” would satisfy the “distinguishable” requirement.   However, if XYZ Corporation is heavily engaged in the ceramics industry and well known, you may still have a larger trademark clearance issue and concerns about infringement, notwithstanding the fact that you have a state corporate registration for your company.

For this reason, simply satisfying the name selection requirements for incorporation does not mean that you are free and clear to use the name.  Clearance for purposes of  incorporation does not equate to clearance for trademark purposes.  From a trademark standpoint, a broader preliminary check is warranted and highly advisable.

For trademark clearance, there are some very simple steps for reducing the risk of infringing someone else’s rights in a particular name or trademark. There are also more advanced and complex steps clearance options that will even further reduce the risk of an infringement and also potentially provide greater enforcement rights in a potential name. Often these additional steps are handled through engagement of a trademark attorney.

Even if you do not wish to take these more advanced and complex steps at the very least, it is highly advisable to do the following:

  1. Google your contemplated name and study your search results. Is there a well-known entity, especially in the field that you are planning to enter, using this name either for its’ company or for its goods or services. If so, you may have an issue. Try searching Google in various different ways and be sure to review more than just the first page of search results.
  2. Check both your state’s corporations index and state trademark registration index.
  3. The Federal Patent and Trademark Office also maintains a database of federally registered trademarks and pending applications found at this link http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4802:177iqt.1.1. The basic search function permits you to type in your contemplated name to see if there is a federal trademark registration covering it.  In general, it is best to search as narrow a portion of your name as possible to maximize the number of related “hits.”  For example if you are thinking of the name Acme Publishing Company, you should search the name “Acme” by itself rather than “Acme Publishing” or “Acme Publishing Company.”
  4. Because many businesses operate under an assumed name it is also advisable to at least check the Register of Deeds in your county to see if there is an assumed name certificate filed for the particular name that you are contemplating.
  5. It is also advisable to check domain name availability for your contemplated company, and, ideally, to secure your new company’s “.com” domain name.

Nothing to be “Glee-ful” About

Show Choir Litigation Devolves into Copyright Morass

A Burbank show choir that purportedly served as the inspiration for the hit television series “Glee,” has been making headlines recently as the principal named defendants in a major music copyright infringement action.

Tresona Multimedia versus Burbank High School Vocal Music Association et al. potentially has tremendous implications for music copyright law.

First, a bit of background. A music copyright actually comprises a bundle of exclusive rights.  The copyright owner, typically a music publisher, has the exclusive rights (i) to reproduce and distribute the work, (ii) to prepare or authorize derivative works, like arrangements, (iii) to perform the work publicly, for example, by digital audio transmission and (iv) to display the work.  Music publishers carefully parse out these respective rights and monetize them through third-party licensing organizations, such as ASCAP (for performance rights) and the Harry Fox Agency (for mechanical reproduction rights).

Because of these separate rights, clearance can be tricky: You cannot assume that if you have cleared a particular right that you have cleared all of the respective rights that you need for a particular use of music or activity.  For instance, a repeat airing of a television program requires both a performance license covering the broadcast, and also a synchronization license covering the inclusion of the music “in timed relation with” or synchronization with the program video.

The longstanding practice, with respect to custom arrangements made for performances by choirs and bands, has been to request and obtain a permission to arrange from the publisher of the underlying music composition that is being arranged. The permission to arrange authorizes the creation of a custom arrangement for performance and also permits the reproduction of the custom arrangement in sufficient copies for use by the singers and performers in concert.  While the Copyright Act does not specifically state that custom band and choral arrangements comprise a derivative work requiring permission from the copyright owner, this has always been the assumption, based on general principles of music copyright law.

Section 115 of the Copyright Act, by contrast, which confers a compulsory mechanical license for permitting reproduction of musical works in sound recordings, does expressly confer a limited right to arrange a work for recording as part of the compulsory license.

In the past several years, Tresona has begun to serve as a licensing agent for a number of music publishing companies, issuing various types of permissions to choirs, bands and other performing groups, for purposes of creating arrangements along with synchronization, mechanical and grand rights licenses (for dramatizing a work).

Tresona learned that the Burbank High School Choir had not been obtaining permissions to arrange or other related types of standard clearance licenses for its concerts or related activities. After efforts to resolve the matter were unsuccessful, Tresona brought suit for copyright infringement.  Tresona’s complaint named not only the choral organization, but also its director, individual board members and even their spouses (board members and spouses were named under the theory that they were indirectly benefitting from the alleged copyright infringement by virtue of certain scholarships alleged to have been awarded to the children of board members).

The matter initially came before the court on cross motions for partial summary judgment on the issue of whether it was appropriate to retain the Choir’s Director, Brett Carroll as Defendant. This determination in turn hinged on whether Carroll had qualified immunity as a public official (as an employee and instructor at Burbank High School, a public school).

In its preliminarily issued ruling on December22, 2016, the Court found that it could not be established, as a matter of law, that Carroll either “violated clearly established rights” or clearly acted in a fashion that was not “objectively reasonable.” The Court explained:

This Court finds that the copyright laws Carroll allegedly violated were not “clearly established…” This Court agrees with Tresona that copyright laws in general were firmly established in 2011, including the need for a license to create a derivative work, distribute audiovisual recordings of a copyrighted work, or perform a musical work in a dramatic fashion. See dkt. 89 at 15-22. However, the Court finds that “the contours” of these rights were not “sufficiently clear· [so] that a reasonable official would understand that what he is doing violates that right.” See Anderson v. Creighton, 483 U.S. at 639…

Use of a copyrighted work “is not an infringement of copyright” when used “for purposes such as … teaching (including multiple copies for classroom use), scholarship, or research.” 17 U.S.C. § 107 (emphasis added).… In this motion, the parties did not brief for the Court the issue of fair use, and thus the Court does not resolve whether fair use would be a successful defense on the merits. At this stage, the Court merely finds that since teaching is explicitly listed as fair use, a public school teacher acting in his teaching capacity would be reasonable in believing the fair use defense applies.

Choir directors attending choral conventions like Hinshaw’s Celebration typically know the in’s and out’s of getting necessary permssions

 

Because of the unique procedural posture of the case, this opinion leaves even more unresolved the following critical questions:

  • How broadly may individuals be insulated from personally liability for copyright infringement as “public officials”?
  • Is the law really unsettled with respect to the need for obtaining a permission to arrange for performance by a band or choir?
  • Why does an in-classroom fair use exemption have any bearing on separate concert activities?

Music publishers and performing arts groups will certainly be following this case closely, and, presumably, some of them may also be contacting their elected representatives in Congress to propose legislation clarifying these issues.

In the meantime, if there is any interest in following custom and practice, please find a sample permission to arrange posted here by the Music Publishers Association: http://www.mpa.org/sites/mpa.org/files/Permission%20to%20Arrange.pdf

New Online Registration System for DMCA Safe Harbor Protection Now in Effect

Many companies and organizations comprise “online service providers” and therefore may be eligible for DMCA Safe Harbor Protection exempting them from liability for certain types of contributory copyright infringement. Online retailers, schools, arts organizations, non-profits and other entities with an online presence that provide “online services,” such as a website, email service, discussion forum or chat room, or have websites or other online platforms that allow others to post or store materials on their sites or systems, typically qualify as service providers under the DMCA.   Providing internet access and storage qualifies as well.

In addition to those who post infringing content, service providers who essentially “publish” this infringing content may also be liable for copyright infringement. The purpose of the DMCA Safe Harbor provisions is to absolve service providers from this form of secondary liability for copyright infringement.  But for DMCA Safe Harbor immunity, a service provider could be named as a defendant in copyright litigation over the unauthorized posting of photos, videos or other user-generated content found on its site.  In this sense, qualifying for the DMCA Safe Harbor can be a valuable tool in minimizing an entity’s exposure to liability for copyright infringement.

However, in order to qualify for Safe Harbor Protection, it is essential for the service provider to designate an agent who is empowered to receive notification of claims to copyright infringement under the DMCA. This agent designation is effectuated through the US Copyright Office’s new online registration system, which took effect a few weeks ago.  A link to the registration system and information can be found here:  https://www.copyright.gov/dmca-directory/

While there are a few other additional requirements for qualifying for Safe Harbor Protection, the first and foremost requirement is making this agency designation. The other requirements are relatively easy to comply with.

Selecting a Name for Your New North Carolina Business

Selecting a name for your new North Carolina business is one of the most important initial decisions that you will make. Why? If you simply select a name without performing any clearance, there is a good chance that another business will contact you and demand that you stop using your name because it is too close to the name of that other business or to the name of similar products or services offered by that business.

You may also encounter problems when you try to incorporate your company through the North Carolina Secretary of State (“NC-SOS”).  The NC-SOS produces an excellent  online pamphlet available online really this is must reading for anyone who wants to form a business in North Carolina. The very first section of the pamphlet addresses name selection.

In North Carolina, there are two (2) principal requirements for selecting a name with respect to the NC-SOS, which are that:

  1. The name must not contain any language stating or implying that the corporation is organized for any purpose other than a purpose that it is lawful and permitted by its articles of corporation.
  2. The name is “distinguishable upon the records of the Secretary of State from the name of any domestic corporation or the name of any foreign corporation authorized to transact business or conduct affairs in North Carolina.”

In essence, these NC-SOS restrictions require you to perform at least some minimal pre-screening of a corporate name.

In practice, the NC-SOS typically will accept even slight variations for purposes of satisfying the above “distinguishable upon the records” requirement. Therefore there are many North Carolina corporations with similar names.  Assume, for example, that “XYZ Corporation” is registered with the NC-SOS.  If you wanted to incorporate as “XYZ Ceramics Corporation,”  the addition of the word “Ceramics” would satisfy the “distinguishable” requirement.   However, if XYZ Corporation is heavily engaged in the ceramics industry and well known, you may still have a larger trademark clearance issue and concerns about infringement, notwithstanding the fact that the NC-SOS will permit registration of XYZ Ceramics Corporation.

For this reason, simply satisfying the NC-SOS name selection requirements for incorporation does not mean that you are free and clear to use the name.  Clearance for purposes of  NC-SOS incorporation does not equate to clearance for trademark purposes.  From a trademark standpoint, a broader preliminary check is warranted and highly advisable.

For trademark clearance, there are some very simple steps for reducing the risk of infringing someone else’s rights in a particular name or trademark. There are also more advanced and complex steps clearance options that will even further reduce the risk of an infringement and also potentially provide greater enforcement rights in a potential name. Often these additional steps are handled through engagement of a trademark attorney.

Even if you do not wish to take these more advanced and complex steps at the very least, it is highly advisable to do the following:

  1. Google your contemplated name and study your search results. Is there a well-known entity, especially in the field that you are planning to enter, using this name either for its’ company or for its goods or services. If so, you may have an issue. Try searching Google in various different ways and be sure to review more than just the first page of search results.
  2. Check both the NC-SOS corporations index and the NC-SOS North Carolina State trademark registration index found at the following link: http://www.secretary.state.nc.us/trademrk/ThePage.aspx
  3. The Federal Patent and Trademark Office also maintains a database of federally registered trademarks and pending applications found at this link http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4802:177iqt.1.1. The basic search function permits you to type in your contemplated name to see if there is a federal trademark registration covering it.  In general, it is best to search as narrow a portion of your name as possible to maximize the number of related “hits.”  For example if you are thinking of the name Acme Publishing Company, you should search the name “Acme” by itself rather than “Acme Publishing” or “Acme Publishing Company.”
  4. Because many businesses operate under an assumed name it is also advisable to at least check the Register of Deeds in your county to see if there is an assumed name certificate filed for the particular name that you are contemplating.
  5. It is also advisable to check domain name availability for your contemplated company, and, ideally, to secure your new company’s “.com” domain name.