Nine years ago, after she had been in business for nearly 25 years, Judy Mozen, owner of Handcrafted Homes Inc., in Roswell, Ga., learned of another company, begun in 1998, named HandCrafted Homes LLC. Although the latter company, which builds modular homes and additions, is located in North Carolina, it does business in several other states, including Georgia.
Mozen thought about suing, but her lawyer didn’t think she would get anywhere. She doesn’t want to change her company name since she feels that doing so creates a bad impression. “People think you’ve gone out of business and are just operating under a new name,” she says.
Search and Find
When starting a business, most owners come up with a name and register it with the proper state commission. Doing so assures that you have documented when your company name was put into use. However, it doesn’t provide you with much other protection.
Finding a name is not as simple as it seems. You shouldn’t use any phrase, name, or logo until you are certain that no one else is already using it. You can begin your research at the U.S. Patent and Trademark Office, and you can even do this online. But it’s somewhat superficial.
A trade attorney should then do a thorough legal examination of domain names, Yellow Pages directories, newspaper listings, and names in use in all 50 states registered at the state corporation commissions level.
The next step might be getting a federal trademark. If someone in another state is researching a name and yours is trademarked, it puts the other person on notice.
However, over the past decade, the courts have winnowed down trademark protection, “substantially carving away at the ability of trademark owners to enforce their trademarks across geographical boundaries and across industry lines,” says D.S. Berenson, an attorney specializing in the representation of contractors. But the good news for the little guy, Berenson adds, “[Is that] if you’ve been sitting in Dover since 1950 operating your little store and a big [guy] comes in, they can get a bloody nose trying to shut you down. Seniority wins.”
One-Sentence Test
Does the similarity in names confuse consumers? That’s the question a court will need answered. It will also look at your “public” and where they are located. “If I sell bread in Texas and you sell siding in New York, there’s little confusion [for] consumers,” Berenson says. If the businesses are similar and are geographically close, confusion is more likely.
Back to Handcrafted Homes: Mozen wanted the other company to stop using the name when it did business in her state. But, she says, “the other company claimed they weren’t affecting our business ... and there was no likelihood of confusion.”
She didn’t pursue the case and, in truth, there hasn’t been much confusion since there is minimal geographical overlap. But now, with the ubiquity of the Internet, Mozen — whose company name is registered with the state but is not trademarked (the other company’s name is trademarked) — is getting calls from befuddled consumers. She might have a good case based on seniority, but it will cost time and money to prove that consumers are confused.
For now, Mozen is recognizing the value in her own personal name. She created a Judy Mozen Web page that directs visitors to her Handcrafted Homes Inc. site and is thinking of integrating the Mozen name into her company name.
