What must I do before using a business or product name?

How do I register my business name?

Is it enough that I registered my business name with the Secretary of State?

What's the difference between trademarks and trade names?

Should I register a trademark federally, or is a Minnesota registration good enough?

What should I know about domain names?

The less that a name describes the goods or services being sold, the stronger the legal protection that name receives.  For example, APPLE has virtually no logical relationship to computers.  As such, APPLE is a very strong trademark for the company, Apple Computer, Inc..  Meanwhile, a name such as WORLD BOOK for encyclopedias receives less strong legal protection because it describes the product itself - i.e. a source of information about the world and published in book format.  

The strongest names from a legal perspective are those that have no meaning -- i.e. made up words.  You will recognize some of the strongest brands in our society are meaningless except as a trademark - e.g. NIKE, KODAK, EXXON, XEROX, etc.  

What's interesting is that these famous trademarks are also very effective from a marketing point of view.  Because they receive strong legal protection, in the long run, they also are good from a marketing perspective -- once people get to know them.  

Granted, the first time you hear the name XEROX you have no reason to know that they sell copy machines.  For this reason, many new business owners think they are better off with a name that describes what they do.  They believe it is preferable to have a name that will tell customers what is sold the moment the name is spoken or written.  While there is truth in this thinking, it may be short-sighted.  Without strong legal protection for a name, growing brand awareness is far more costly  and difficult in the longer term.  And the importance of strong branding cannot be understated in terms of maximizing profits for a company. 

One compromise solution for those who insist on a name that relates to their underlying products  is to chose a name that includes a portion that is either made up or arbitrary, and a portion that suggests or describes the business.  For instance, Startup Edge does exactly that.  While "startup" suggests the nature of services we offer, the word "edge" contributes a stronger, arbitrary component, which strengthens the overall trademark.  For more information about choosing a good trademark, visit our companion site at TrademarkEdge

Clearing a name for trademark purposes is different from clearing a trade name with the Secretary of State (see below).  

Trademark clearance involves searching to see if other companies are selling similar products with a similar name.  The level of similarity doesn't need to be identical, nor even highly-similar in some cases.  The level of similarity needed is what the courts call "confusingly similar."  This legal standard is murky and frustrating to business owners.  Several criteria that are defined and fine-tuned in hundreds of cases determine whether one trademark is confusingly similar to another.  If they are confusingly similar, then the second user of the mark has infringed the first.  An infringer must, at a minimum, stop using the mark immediately, and in some cases may have to pay monetary damages to the first user of the mark.

Registering your name with the Minnesota Secretary of State is required by law if you conduct business in Minnesota.  The federal government doesn't normally require that your name be registered in order to conduct business, although there are exceptions.  For example, the IRS will ask for your business name when assigning your Tax ID number.  Moreover, the Securities and Exchange Commission or other agencies have name registration requirements that apply to some, but not all businesses.  Whether your business is the type that must register with one federal agency or another can probably be determined by reading trade journals, calling around to agencies that license or oversee the activities of your particular industry.  Finally, registering your name as a trademark is recommended on the federal or state level, although doing so is optional.   

The MN Secretary of State registers business names in a couple different ways.  First, if you are incorporating your business, then submitting your Articles with the corporate or LLC name is sufficient.  Alternatively, if you are operating as a sole proprietor or general partnership, and not filing for liability protection, then you will need to file an application for an assumed name certificate (also known as a "doing business as" registration or "dba" registration). You can download the application for an assumed name from the Secretary of State's website by clicking here. Don't forget to publish your name as instructed on the Secretary of State form.

If you are only using your exact, full, legal name to conduct business, then you do not need to register it as an assumed name.  The Secretary of State's Office will answer questions about the name registration requirement if you call 651-296-2803.  They can also be reached on the web at http://www.sos.state.mn.us.  

If you wish to register a trademark, you should first consider clearing the trademark for use. (see above).  Once that is done, you may proceed with either a federal or state trademark registration (see below).

It is important to understand that the Secretary of State may "okay" a business name for the purposes of having a record on file identifying the owner. But, when registering a business name the Secretary of State is making no comment about the trademark legitimacy of that  mark.  It is not uncommon for the Secretary of State to "okay" a name, only to have that name later become the subject of litigation over trademark rights.  

Registering a business name with the Secretary of State is required under law, and is done to provide interested members of the public with information about who owns a given company, and where the owner can be served papers in the event of a lawsuit.  Failure to register a business name with the Secretary of State means the unregistered company cannot sue in a Minnesota court if they've been harmed -- at least not until they make the necessary filing with the Secretary of State. 

A trademark is an indicator of who controls the quality of production in a business while a trade name identifies the exact name of the entity itself.  APPLE COMPUTER^® is a trademark while Apple Computer, inc. is a trade name.

It is important to understand when you are using a trademark versus when you are using a trade name so that you can provide the appropriate notice symbol for the occasion.  

Your business name is used as a trade name when it is used so that people know where to locate you or how to reach you.  For instance, using your trade name on letterhead or business cards is generally not sufficient to establish trademark rights.   You are using the name for people to contact you.  As such, you should indicate any limited liability status you may have by the appropriate symbol such as "inc.," "incorporated," "LLC," "Ltd.," or other such indicator.  In this context, you don't also need to use the trademark symbols of TM, SM or  "®" 

When you adopt these practices you may easily find that a single document will include both a trademark and limited liability symbols.  An example of this would be a brochure, which presents the name in large bold text on the cover, with a "TM," and uses the name again on the back side, this time in smaller letters with address and phone or other contact information.  It is generally considered inartful to always use both types of symbols in every instance of the use of the name.  However, if in doubt, use the trademark symbol and the limited liability symbol together, for example:
                    TrademarkEdge, LLC (tm).