Biz Names - Do Your Homework First!

Business By cakesdivine Updated 13 Apr 2010 , 12:00am by cakesdivine

cakesdivine Posted 8 Apr 2010 , 8:50pm
post #1 of 29

I just came across another cake business in another state (a home biz in SC) with my business name. Well I had Cakes Divine trademarked, along with my tagline back in 2000. I hate that I had to contact her to inform her that I held the TM and that she would need to change her biz name.

People...all she had to do was do a google search on that name and my site pops up numero UNO! (number 1 for those who don't speak Spanish...lol).

So please, I emplore you to save everyone the headache & embarassment...Please do a thorough online search to make sure your biz name is uniquely yours and yours alone. Even if someone is in another state or town they might have that name trademarked, even if it doesn't reflect that on their site.

I had an issue with a person in Georgia 5 years ago who had my name and just added one other word to the name. People were always going to her site accidentally because her site didn't have that extra word in it. Her cakes were very novice, and I lost several potential clients because they would accidentally order on her site, and I would know absolutely nothing about the order until they called that I hadn't delivered or it wasn't there when they came to pick it up. I had one client call me and tell me they had decided to go with someone else after looking at the designs of the cakes on my site and that they were looking for a more professional decorator. When I asked her what the site address was it wasn't the same, so I gave her my site address again (which has a hyphen between the cakes & divine) and she told me that was not the site she originally saw and apologized. But it was a lost sale none the less.

28 replies
joenshan Posted 8 Apr 2010 , 10:16pm
post #2 of 29

I actually have an interesting story about that. My great uncle had a company called American Radio Company and he used the acronym ARC. So before long, another company comes along named American Record Company and also used the acronym ARC. Well, my Uncle Ed took them to court and won so they had to change their name, so they changed it to RCA! That's a true story!!

cakemom42 Posted 8 Apr 2010 , 11:36pm
post #3 of 29

I agree with you both it is very frustrating.. & it happens in all sorts of businesses...My sister owns a resort & wouldn't you know an area resort took to the same tactics.... people can't think up their own ideas & feel the need to cheat/steal others.... I am sorry this has happened to you but keep forging forward.... & take pride in this odd sort of compliment. :0)

malakainrop Posted 8 Apr 2010 , 11:54pm
post #4 of 29

Sound advice - although find it a bit weird that a government that can "allegedly" put a man on the moon ...... does not have a pre-requisite SEARCH before allowing you to Register the name - pretty simple thing really.

I know in Australia - you can't register a business name if somebody else has it - you can't even add an "s" - or change the spelling - different states have different rules but they are all brought together under a Federal ruling - so no need to worry for business owners.

Also, you aren't allowed to register a domain name if you don't have a registered business in the same name - so you don't have the problem of people parking all these domain names and trying to SELL them to businesses as they register the same name!

MalibuBakinBarbie Posted 9 Apr 2010 , 12:12am
post #5 of 29

[Not to hijack the thread, but how interesting, joenshan! My mom used to work for RCA many years ago! I'll have to tell her that story!]

Sorry this happened to you, cakesdivine. I'm sure it was no fun to tell someone they have to change their name (especially if they have things printed with the company name, like price lists, business cards, etc.). Thank you for sharing this valuable information with us!!!

Michelle104 Posted 9 Apr 2010 , 3:03am
post #6 of 29

When I contacted my sec of state they said that in our state unless a name is TM as many people that want to can use that same name. Isn't that crazy?? I did check when i registered mine and there were none other that I could find. ??

tavyheather Posted 9 Apr 2010 , 4:03am
post #7 of 29

I actually didn't know this...I thought as long as the person didn't have the same biz name within your state you were fine..

There is someone with their biz name (not a bakery, but a high-end cake artist) in NY city...I'm in SD...wdyt? how do I see if it's TM'd?

cakesdivine Posted 9 Apr 2010 , 4:29am
post #8 of 29

It doesn't matter, if it is the same name and you are both doing cakes then it can be a conflict even if they are in a different state. If the name is trademarked then if they discover you, they can ask you to cease & desist use of the name.

all4cake Posted 9 Apr 2010 , 5:03am
post #9 of 29

I had an issue with a person in Georgia 5 years ago who had my name and just added one other word to the name. People were always going to her site accidentally because her site didn't have that extra word in it. Her cakes were very novice, and I lost several potential clients because they would accidentally order on her site, and I would know absolutely nothing about the order until they called that I hadn't delivered or it wasn't there when they came to pick it up.

Issue with this situation (aside from the biz name that you got taken care of) is ignorance of the customers or lack of information on one or both sites...ain't it listed the area that is served on both sites? I'm just sayin'...I have never visited a site for baked goods without checking what area they're in and/or what area they serve...

11cupcakes Posted 9 Apr 2010 , 5:28am
post #10 of 29

What do you have to do to TM name?

cakesdivine Posted 9 Apr 2010 , 1:16pm
post #11 of 29

You can get all the information online on how to get a TM. I had to hire a lawyer and they pretty much handled it for me. It cost me $1500 to purchase the trade mark and pay the lawyer their fee. This was 10 years ago.

all4cake - It was partially my fault that she was able to secure that site name as I let it lapse accidentally while I was going through my divorce (really rough time in my life), and I was using a webmaster at the time who wasn't very on top of things either. When I realized the domain name had lapsed when I went to renew, it said it was not available. So I put it in my browser, and up came her site. I was so upset, not only at her, but at myself for allowing it to lapse in the first place. She didn't have any information on her site as to where she serviced, and only an email address as a contact, no phone so she probably did it from home, not sure. At anyrate, my site clearly stated that I serviced Houston and the surrounding areas. I didn't have the money at the time to fight her about the issue, after the lost bride incident I did demand that she put a statement on her home page that she was NOT the Cakes Divine that serviced Houston, TX and she put a link to my site right there on her home page, that did deter some of the confusion, but not all. Cake muggles aren't always the brightest bulbs in the bunch icon_wink.gif

mpence Posted 10 Apr 2010 , 4:17am
post #12 of 29

cakesdivine, is your TM a State or Federal TM? $1,500 seems quite low for registering your mark with the U.S. Patent and Trademark office. If it is only registered in Texas, that wouldn't prevent another business in another state from using the same name.

tavyheather, you can do a search of the federal trademark registry by going to uspto.gov. To check within your state, you may be able to do an on-line search of the business filings on your state's Secretary of State's website.

tootie0809 Posted 10 Apr 2010 , 2:26pm
post #13 of 29

Can you trademark a name that is already in use by another business? Just wondering if someone can swoop in and "steal" another businesses name if that business hasn't trademarked their name and the new business wants it.

sweetooth94 Posted 10 Apr 2010 , 2:58pm
post #14 of 29

This is a little "off-topic" but reading this reminded me of a true story that happened in our area a few years ago. Not far from my parent's home is a small drive-in ice cream stand. It's a family run business and has a walk-up ordering window that serves burgers and fries and ice cream. It's name is Krispy Kream and it's been in it's current location since 1968!!

Several years ago it hit our local news that they were being sued by Krispy Kreme (notice the spelling IS different) the donut chain - for using their name that they had TM'd sometime in the 1950's. I've attached the story and the photo of the little drive in (hope the link worked). All worked out in the end, but this story came to mind while reading this topic.

www.tribune-democrat.com/local/local_story_093000916.html

yums Posted 10 Apr 2010 , 3:42pm
post #15 of 29

I think you don't give people enough credit. I just used the U.S trademark site posted previously to look up your "cakes divine" and it said there were no matches. I think it is impossible to come up with something no one else hasn't already thought of. They probably "came up" with the name, contacted their state and were given the go ahead.

leily Posted 10 Apr 2010 , 8:35pm
post #16 of 29
Quote:
Originally Posted by yums

I think you don't give people enough credit. I just used the U.S trademark site posted previously to look up your "cakes divine" and it said there were no matches.




I just did this too and all that comes up is Divine Cakes and Cake Divine (which is now dead)

You may want to follow up with whoever trademarked your name and make sure all the paperwork went through.

kellertur Posted 11 Apr 2010 , 12:26am
post #17 of 29
Quote:
Originally Posted by malakainrop

Sound advice - although find it a bit weird that a government that can "allegedly" put a man on the moon ......




I just love that ~ See you on the other side...of the moon. icon_smile.gif

costumeczar Posted 11 Apr 2010 , 12:33am
post #18 of 29
Quote:
Originally Posted by tootie0809

Can you trademark a name that is already in use by another business? Just wondering if someone can swoop in and "steal" another businesses name if that business hasn't trademarked their name and the new business wants it.




No, if someone else is using it and they can prove that they had it as their business name before you try to trademark it, they can challenge it if it ever went to court.

cakesdivine Posted 11 Apr 2010 , 12:37am
post #19 of 29
Quote:
Originally Posted by mpence

cakesdivine, is your TM a State or Federal TM? $1,500 seems quite low for registering your mark with the U.S. Patent and Trademark office. If it is only registered in Texas, that wouldn't prevent another business in another state from using the same name.

tavyheather, you can do a search of the federal trademark registry by going to uspto.gov. To check within your state, you may be able to do an on-line search of the business filings on your state's Secretary of State's website.




The Texas state one is actually only $50. It was $1500 10 years ago. The price now is well over $3000

kellertur Posted 11 Apr 2010 , 12:40am
post #20 of 29

Don't you have to renew the trademark? I was told they are only valid for 10 yr blocks.

cakesdivine Posted 11 Apr 2010 , 12:48am
post #21 of 29
Quote:
Originally Posted by leily

Quote:
Originally Posted by yums

I think you don't give people enough credit. I just used the U.S trademark site posted previously to look up your "cakes divine" and it said there were no matches.



I just did this too and all that comes up is Divine Cakes and Cake Divine (which is now dead)

You may want to follow up with whoever trademarked your name and make sure all the paperwork went through.




Gosh thanks for the heads up! I better go digging in my storage for those papers and figure out what is up. Maybe I got hood winked icon_surprised.gif

Great just what I need to deal with. Crap, one more thing on my plate...UGH!

I did talk to the woman, she was very nice, and she said she only checked her area for the name as a dba.

kellertur Posted 11 Apr 2010 , 1:01am
post #22 of 29

My FIL is a lawyer/judge and as he'd say: "Buyer beware" regarding all transactions legal or otherwise.

epscott Posted 12 Apr 2010 , 7:12pm
post #23 of 29

You shouldn't feel bad....she is not allowed in the state of SC to have a home biz selling cakes anyway.

cakesdivine Posted 12 Apr 2010 , 7:20pm
post #24 of 29
Quote:
Originally Posted by epscott

You shouldn't feel bad....she is not allowed in the state of SC to have a home biz selling cakes anyway.




Unfortunately people do it all the time. thumbsdown.gif So as long as she has a website that can be googled with that name, I could loose potential business. Now I have to deal with finding out why my trademark doesn't show in the national registry. Very upset about that since it cost me a small fortune to get it. Not to mention jumping through all the hoops again to secure it again. icon_cry.gif I am just flabbergasted about it all right now. A bit overwhelmed too as I am so busy right now and will be until late June, don't really have a spare moment to go fish this stuff out of storage. Have half a mind just to do the filing again and then look for the stuff later. Life has been really crazy here of late. ouch.gif

tavyheather Posted 12 Apr 2010 , 7:24pm
post #25 of 29
Quote:
Originally Posted by mpence



tavyheather, you can do a search of the federal trademark registry by going to uspto.gov. To check within your state, you may be able to do an on-line search of the business filings on your state's Secretary of State's website.




awesome, thanks! Did one and only thing that cake up was wayyy off, like one letter at the beginning and one word at the end after like 10 words!

Soooo...if that means I'm free to TM it, anyone know how much it costs in CA?

cakesdivine Posted 12 Apr 2010 , 7:43pm
post #26 of 29
Quote:
Originally Posted by tavyheather

Quote:
Originally Posted by mpence



tavyheather, you can do a search of the federal trademark registry by going to uspto.gov. To check within your state, you may be able to do an on-line search of the business filings on your state's Secretary of State's website.



awesome, thanks! Did one and only thing that cake up was wayyy off, like one letter at the beginning and one word at the end after like 10 words!

Soooo...if that means I'm free to TM it, anyone know how much it costs in CA?




OK I am really confused icon_confused.gif In your earlier post you stated you were in SD, now you are asking about CA...so which is it? Are you in South Dakota or California. Also, this is a national trademark, so it would be nationwide not state specific. A national TM supercedes a state TM. So if you have a national TM no one in the country can have your name, if you do an international TM (very pricey) then your TM is global. Depending on what you are filing...the online filing is $275 in some cases and $375 in others. and that is per category, so I can TM my logo and my name but, from what I understand I have to do so separately so it would cost me $550 to do both. If you hire a lawyer to do it, which is what I did originally because back then there was no online app to submit, it will cost you substantially more money. HTH

leily Posted 12 Apr 2010 , 7:50pm
post #27 of 29
Quote:
Originally Posted by cakesdivine

Quote:
Originally Posted by epscott

You shouldn't feel bad....she is not allowed in the state of SC to have a home biz selling cakes anyway.



Unfortunately people do it all the time. thumbsdown.gif So as long as she has a website that can be googled with that name, I could loose potential business. Now I have to deal with finding out why my trademark doesn't show in the national registry. Very upset about that since it cost me a small fortune to get it. Not to mention jumping through all the hoops again to secure it again. icon_cry.gif I am just flabbergasted about it all right now. A bit overwhelmed too as I am so busy right now and will be until late June, don't really have a spare moment to go fish this stuff out of storage. Have half a mind just to do the filing again and then look for the stuff later. Life has been really crazy here of late. ouch.gif




So sorry you find out about it not being in the registry now. Hopefully it's just a simple mistake and something somewhere wasn't updated.

tavyheather Posted 12 Apr 2010 , 8:51pm
post #28 of 29
Quote:
Originally Posted by cakesdivine

Quote:
Originally Posted by tavyheather

Quote:
Originally Posted by mpence



tavyheather, you can do a search of the federal trademark registry by going to uspto.gov. To check within your state, you may be able to do an on-line search of the business filings on your state's Secretary of State's website.



awesome, thanks! Did one and only thing that cake up was wayyy off, like one letter at the beginning and one word at the end after like 10 words!

Soooo...if that means I'm free to TM it, anyone know how much it costs in CA?



OK I am really confused icon_confused.gif In your earlier post you stated you were in SD, now you are asking about CA...so which is it? Are you in South Dakota or California. Also, this is a national trademark, so it would be nationwide not state specific. A national TM supercedes a state TM. So if you have a national TM no one in the country can have your name, if you do an international TM (very pricey) then your TM is global. Depending on what you are filing...the online filing is $275 in some cases and $375 in others. and that is per category, so I can TM my logo and my name but, from what I understand I have to do so separately so it would cost me $550 to do both. If you hire a lawyer to do it, which is what I did originally because back then there was no online app to submit, it will cost you substantially more money. HTH





LOL, forgive my ethnocentrism...I assume the whole US knows that SD = San Diego...apparently I forgot my 5th grade geography...duh, there is a state with the abbrev. SD...ughh anyway, YES I am in CA, spec. San Diego. sorry for the confusion!

cakesdivine Posted 13 Apr 2010 , 12:00am
post #29 of 29

LOL....it's cool tavy. I just was really like What? Kind of threw me. icon_wink.gif

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