What's in a name? A primer on trademark law.

• Author: Wilhite, Brent
• Position: Small business Advisor

WHAT'S IN A NAME? Try several months of litigation, thousands of dollars in attorney's fees, and possibly re-branding your company if you're accused of treading on someone else's name.

Naming your company after yourself is a common practice in today's image-conscious business arena. However, you can pay a high price if you're caught infringing on someone else's trademark.

"This area is fraught with difficulty and is not intuitive," says Preston Regehr, an attorney with Salt Lake's Parsons Behle and Latimer. 'At first glance, a person has a right to do business in their own name, but that's where it ends."

In the United States, the right to use your name to identify your company is governed by trademark law. One of the strongest rights in a federally registered trademark is nationwide priority, which is akin to a first-come-first-served principle. "Nationwide priority," explains Regehr, "means beginning at the date or time the application is filed, the owner has a right to use a trademark throughout the U.S., and that right is superior to everyone else that comes later in time to file."

Regehr points out that most people think two names must be identical in order to cry trademark infringement. Not so, he says. As an attorney who specializes in trademark, Internet, marketing and licensing law, he sees plenty of people who are confused by how a trademark is deemed infringing. "People believe the trademarks have to be identical, or if they are just a little bit different, then it's okay. The law says that if two marks, words or names are similar in any conceivable way (such as sound, pronunciation, meaning, or dominant commercial impression), then it is possible that you could have a trademark infringement."

If you're exploring a potential trademark infringement problem for your company name, Regehr recommends applying a two-pronged test: "First, you look at the two trademarks to see if there is any kind of similarity. If there is a similarity, then you look at the respective goods or services with which each mark is used. If those are also similar, then it could be possible that there is what's called 'a likelihood of confusion, mistake or deception.' For trademark infringement, you do not have to have actual confusion. ft is sufficient if there's a likelihood of confusion, mistake or deception. That is a difficult test to apply."

Shouldn't these concerns of similar business names be prevented right from the start? In order to conduct business...