Q: My friends and I recently formed a production company that we plan to use to produce straight-to-DVD movies. We really like the name we picked and think it’s really distinctive. When we formed the company, we had to do a name search with the California Secretary of State. Luckily no identical name came up so I think we’re free to use the name without having to worry about some other company who’s using the same name, correct?

A: Incorrect. To ease the blow of this blunt, negative answer, let me first congratulate you on trying to stump the lawyers, whether you meant to or not. While your question sounds entertainment-y, it’s actually more a question about intellectual property law, and, more specifically, trademark law. Our moms read this blog (and probably make up 50% of our readership); are you trying to make us look bad in front of our moms?!

Luckily one of the heads of this two-headed Q&A beast has a background in trademarks. To get into your question, the search you did with the Secretary of State only applies to your ability to form a company under a specific name but tells you nothing about your ability to then use that name as your production company’s brand (aka trademark). The easiest way to explain the difference between a company name and a brand is by example. “Coca-Cola” is a brand we all know (unless you youngsters only drink Red Bull these days). The corporation who uses the Coca-Cola brand is organized under the corporate name “The Coca-Cola Company.”

In your case, your company name and the brand under which you’ll be producing may be the same thing. Let’s say your company name is “Transaction Jackson, LLC.” I’m assuming that the name people will see in the credits of your movies and on the back of the DVD’s is “Transaction Jackson.” That will be your brand and you need to be careful that your use of that brand doesn’t violate the rights of a third party who may have pre-existing trademark rights in the same or similar name. The fact that a California corporate name search didn’t come up with any conflicts unfortunately doesn’t tell you much.

The first thing you can do is try to find out if anyone has a U.S. Federal Trademark registration for that name that covers services that are identical or at least relate to your entertainment production services. The U.S. Patent and Trademark Office has a fairly easy search engine which you can find on the Trademarks website.

If you see that someone owns an application or registration for your name, or a confusingly similar name, for production services or related services, then you’ll know you shouldn’t use that name as your brand because, if you did, you would open yourself up to liability for trademark infringement.

Unfortunately for you, under U.S. law (which is different than the laws of most other countries), one need not own a trademark registration in order to have trademark rights in a brand. Trademark rights begin accruing when a company uses a brand in commerce, with or without a registration. Therefore, your goal is to try to figure out whether an individual or company out there has been using the same or similar name for production services (or related services). The easiest, least expensive, but least reliable way to find this out would be to do what I do whenever I want to feel depressed: Google your name. The most reliable (and, thus, recommended) way to do this search would be to order a Comprehensive Trademark Search Report from a company like Thomson Compumark. These reports use several searching methods in a variety of databases to try to find any and every third party use of an identical or similar name (this, of course, costs money). Regardless of how you search, the goal is to see if you find another company offering services similar to yours that’s already using your name or a similar name. If there is such a company, your favored name is not as distinctive as you thought it was and your use of that name may violate that other party’s trademark rights.

Two important notes about trademarks that most people don’t realize: First, unless you’re talking about a famous brand, the owners of trademarks generally only have rights with respect to the types of goods or services on which they use their trademark. In other words, if a company is using the brand “Transaction Jackson” for cleaning brushes, that company’s rights will allow them to prevent other companies from using that same name, or a confusingly similar name, for cleaning brushes and other related products. However, that company could not prevent you from using that name for an entertainment production company because your services are unrelated to cleaning products.

Second, an existing third party trademark does not have to be identical to your trademark in order for it to be problematic, it only has to be confusingly similar. Therefore, if another production company is using the trademark “Transaction Jackson,” you can’t just change your name to “Transaction Johnson” and be in the clear. There’s a chance those two names are so similar that your average person would think your two companies are one in the same.

Similarly, the services of the third party do not have to be identical to your services for your use of an identical or similar trademark to be problematic. For example, if there’s a television production company already using your proposed brand, you’re not in the clear just because you’re going to be producing straight-to-DVD movies; production of television programs and DVD movies are so related that an average consumer would think that the “Transaction Jackson” making TV shows is the same “Transaction Jackson” that’s making DVD movies. If that’s the case, your use of that name would infringe upon that third party’s rights.

Of course, as with most of our advice, the best recommendation we can give to you is to have a lawyer help you through this process. This is just a general overview of trademark law; there are a lot of potential tricky issues that only a lawyer could spot. The reason you need to consider trademark issues when picking your name is to avoid a situation in which you’ve poured a lot of money into marketing your brand and you’ve gotten to the point where it’s starting to gain some recognition only to have some third party company come out of the woodwork to sue you and prevent you from continuing to use your brand.

This blog was originally published as part of Legal Ease, Film Independent’s weekly column on legal matters pertaining to the entertainment industry. To see other LEGAL EASE columns please click here.

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