The Battle of Names – How to Determine Trademark Rights

When I was at a business owners’ workshop recently, an entrepreneur who is on her way to starting a corporate consulting business shared that she had come up with a name for her business. She wanted to call it  “Leading Change”. But there was a book out there with the same title and she asked the business coach if she would be infringing on the author’s trademark rights.

Being the only IP lawyer in the room, I couldn’t sit quietly and let the question slide by. There are a few things to look into when you are confronted with a situation like this.

  1. Check whether the name is registered as a trademark. Book names are generally not registrable as a trademark unless there is a series of books published under that name. Stand alone books or one time publications are not protectible.
  2. The category in which the name is registered is important. For example, if “Leading Change” was registered as a trademark for jewelry, it would probably not interfere with “Leading Change” for corporate consulting services. Similarly, if the book series titled “Leading Change” was registered for dating and relationship coaching, it would probably not interfere with “Leading Change” for corporate consulting services.
  3. There is a difference in using the term as a brand name versus using it as part of content for your business. If you are using “Leading Change” not as a brand name, but as part of sales content to highlight the company’s philosophy, then it probably would not interfere with a registered owner’s rights.

Of course, before you make any decision and spend money on developing, promoting and marketing your brand, you should consult an attorney with expertise in trademark law.

At Nupur Shah Law, we help business owners determine their trademark rights and secure trademark registrations. Call us at 646-820- 1366 or email us at nupur@nupurshahlaw.com. I am happy to have a complimentary conversation with you on how to secure and/or defend your rights.

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