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Will my Secretary of State allow me to register a company name with a similar name to an abandoned trademark filing?
Anonymous4 views3 answers
I am planning to register a company called "ABC Corp." with my Secretary of State.
There is another company trademarked "ABC Company" (in the same industry). However, this company has recently abandoned its trademark filing (status "601 - Abandoned - Express" on the USPTO website).
Will my Secretary of State accept my filing to register my company as "ABC Corp."?
I agree with what both of my colleagues wrote above.
When filing to register your entity, most offices of the secretary of state do not do any trademark searching (in fact, I am not aware of any doing this). They are only looking to see whether there is CURRENTLY a business entity with that EXACT name already registered and active in the state. If not, then they are usually fine with the name (with some exceptions), even if it is infringing.
However, as mentioned, you do need to keep in mind your future business plans and branding.
Just because you register the name successfully, that does not mean that you will be able to use it in any of your marketing materials, as it may be infringing on a trademark. That's fine if you are just registering a name as a sort of formal business entity, but all of your public-facing branding will be using a DBA that is different. However, you may be limiting your future business options by picking a strong and protectable name.
If someone else abandoned their registration, they may still be using it in business, and thus creating issues for your own future use, even if it isn't registered. They may also have expressly abandoned it because they tried to get it, and someone else opposed it, who was already in business with the mark.
You may want to consider hiring an attorney to review the file on the other trademark application, review your current and long-term future plans, and present you with formal legal advice before you spend your time and money on establishing a company and moving forward with marketing that may turn out to be a wasted effort.
The CA Secretary of State does accept applications for STATE law trademarks, largely for CA-based services, but if you mean CORPORATE formation, that's not a trademark and it doesn't much matter what you call your corporation or LLC.
A corporate entity isn't a trademark, and won't acquire you any trademark rights, whether something on the USPTO site is listed as abandoned or not.
Choosing a name you KNOW has been in us, and still might be, even if the formal federal registration has lapsed. will make it impossible for you to swear that the trademark's not already in use if/when you apply for your own rights.
Don't register anything til with anyone til you get some legal advice. The time to invest in professional help is now, before you make decisions that could force you to re-brand or get you sued for trademark infringement.
Chance are your Secretary of State won't care one way or the other. On the other hand if ABC has common law trademark rights in ABC and you're in a similar business, they could sue you. "Abandoning" a trademark application does not mean the trademark is "abandoned."