Can I add "by (my name)" to the end of my business name to differentiate it from another registered business in the same state?

[lucybeth]

I accidentally started a business without realizing that the same name was already registered as an LLC in Ohio. Although it says it's active, I couldn't find it being used online anywhere. I got in contact with the owner who says it is not in use. However, I still can't get them to dissolve it. I already bought and now own the domain name for my website and email address that I've been using. If the domain name is the same as their LLC but I add "by (my name)" to the title of the company, is that enough of a difference? I will register it in Ohio with the "by (my name)" added on, but the domain name does not include that. Will that suffice, or do I need to start over and operate under a new domain and email address?

 

[adjusterjack]

As soon as you start making money off the name, you are almost guaranteed to get sued.

Call the other guy back and offer to buy the rights to the name. If he won't sell, start over.

An infringement lawsuit, even if you win, could cost you a great deal of money.

 

[Taxing Matters]

I suggest that you see a business or intellectual property attorney for advice. You won't be able to register a LLC in the state with the same name that someone else has already registered. However, if the other person has not ever done business using the name and you start using the name for business that generally would give you the right to the trademark because trademarks are established by use of the name in commerce. Putting a name on a LLC registration is not enough by itself to give that other person a trademark for the name. If there was a potential conflict problem, simply adding your name at the end may not be enough to eliminate a trademark infringement issue (and even if didn't create an infringement issue it likely wouldn't be a particularly strong mark to make you stand out from other businesses). In addition, you also need to check if the name is registered as a trademark with the U.S. Patent and Trademark Office (USPTO) and also check for any other businesses out there that may be using the same or similar name. Those are things that an attorney can help you with. In general the best business names are those that are distinctive and unique in the kind of business you are doing. If the name is similar to another one, that risks customer confusion over which company provides what the customer is looking for, and that can cost you business even if there isn't a trademark issue.

 

[Zigner]

I accidentally started a business without realizing that the same name was already registered as an LLC in Ohio. Although it says it's active, I couldn't find it being used online anywhere. I got in contact with the owner who says it is not in use. However, I still can't get them to dissolve it. I already bought and now own the domain name for my website and email address that I've been using. If the domain name is the same as their LLC but I add "by (my name)" to the title of the company, is that enough of a difference? I will register it in Ohio with the "by (my name)" added on, but the domain name does not include that. Will that suffice, or do I need to start over and operate under a new domain and email address?

Microsoft by Billy
Apple by Eric
IBM by Sarah
Chevrolet by Tina


Yeah, that probably won't fly.

 

[adjusterjack]

Microsoft by Billy
Apple by Eric
IBM by Sarah
Chevrolet by Tina

Wish I'd have thought of that. LOL.

 

[zddoodah]

If the domain name is the same as their LLC but I add "by (my name)" to the title of the company, is that enough of a difference?

Enough for what?

I will register it in Ohio with the "by (my name)" added on

Register it with what agency? For what purpose?

Will that suffice, or do I need to start over and operate under a new domain and email address?

It's not entirely clear what you're asking, but your question touches on a few areas of law.

For purposes of discussion, I'm going to assume the name of the other company is Really Cool Widgets, LLC ("RCWLLC") and that the business you started is a sole proprietorship called Really Cool Widgets.

Your operation of a business called "Really Cool Widgets" would likely infringe on RCWLLC's trademark rights, and RCWLLC could probably obtain an injunction preventing you from doing business under that name, including maintaining a website at www.reallycoolwidgets.com.

Changing your business name to "Really Cool Widgets by Lucy Beth" probably would not be enough to prevent the above.

HOWEVER, since RCWLLC, despite being listed as an active LLC by the Ohio Secretary of State, apparently is not operating, then it is unlikely that RCWLLC will pursue any claim against you. Moreover, even if RCWLLC wanted to pursue a claim, if it is not doing business, then its trademark rights may be weak or non-existent. And I disagree with the prior response that said you're "almost guaranteed" to be sued (I do, however, agree, that an agreement to purchase rights in the name from RCWLLC wouldn't be a terrible idea). And, while I generally agree with the point that "Zigner" made, I don't think it's a good analogy because of obviously different facts.

Of course, changing your business's name entirely might be the best option in the long run, but I obviously don't have any facts about goodwill you've generated under that name or other things that may counsel against doing that.

If that doesn't answer your question, please feel free to clarify your question and the relevant facts.

 

[quincy]

I accidentally started a business without realizing that the same name was already registered as an LLC in Ohio. Although it says it's active, I couldn't find it being used online anywhere. I got in contact with the owner who says it is not in use. However, I still can't get them to dissolve it. I already bought and now own the domain name for my website and email address that I've been using. If the domain name is the same as their LLC but I add "by (my name)" to the title of the company, is that enough of a difference? I will register it in Ohio with the "by (my name)" added on, but the domain name does not include that. Will that suffice, or do I need to start over and operate under a new domain and email address?

What is the name of your state? Are you also in Ohio?

Same name businesses can peacefully coexist if they are not marketing the same goods or services or if their consumer base is different. Think Dove soap and Dove ice cream bars.

It can be possible for two different businesses with the same name and same goods/services to operate in different geographical locations (e.g., one confined to Florida, one solely in Ohio).

For both state and federal registrations of the similar or same names, however, there can be some challenges.

Trademark law centers on consumer confusion. If either your business name or your domain name can confuse consumers into thinking you are the other business, your open yourself up to a costly lawsuit.

It could be best to cut your losses and start over with a new name that is unique to you.

 

[LdiJ]

Microsoft by Billy
Apple by Eric
IBM by Sarah
Chevrolet by Tina


Yeah, that probably won't fly.

Unless it is something a bit more generic than well known corporate names.

 

[quincy]

Unless it is something a bit more generic than well known corporate names.

Adding a couple of words to any registered trademark, famous or generic, will still be infringement if consumers are confused by the use, just as using the exact same trademark another entity is using may not be infringing if the dual uses do not cause consumer confusion.

The following case, In re. E.I. DuPont deNemours & Co, lists the factors (now referred to as “the DuPont factors”) that will be considered when deciding if a name already federally registered as a trademark by another entity is eligible for its own registration.

https://casetext.com/case/application-of-ei-dupont-denemours-amp-co

Again, there are two Doves. There are two Deltas. There are two Pandoras. There are two Apples (although this only after lengthy litigation). And there are numerous other examples available on a simple trademark search, of both shared famous names and shared lesser known names. To search federally registered trademarks (and for more information): https://www.uspto.gov/trademarks/search

Even when there is no problem registering a same-name trademark federally, there is likely to be a problem trying to register a same-name trademark on the state level. Most if not all states will refuse registration of a business name if the same name is already registered to another company. For states, therefore, the registrant will probably need to use another name for registration (with perhaps a d/b/a after this other name).