Thinking of using your name (eg. surname) as part of your business name? You may want to reconsider because the protectibility of a business name that includes a surname is extremely limited in North Carolina. As a rule, a trademark cannot be taken in a surname, and the mere incorporation of a business using a surname does not give that business the exclusive right to that name in North Carolina.
The North Carolina Supreme Court has continuously upheld the rule that a man has the right to use his own name in connection with his business. Therefore, if someone has the same or similar surname as you, that person can legally incorporate and operate a business using the same name, even if it identical to yours.
There are a few limitations to this rule, however. The subsequent user must not be in the same locality as the original user, and there must be no evidence that the subsequent user selected the name with the intent to injure the original user or fraudulently avail itself of the original users’ good name or reputation.
While “locality” has not been specifically defined, the opening of a new business providing the same services, in the same building, in the same city using the same surname as the previous business was determined to be “in the same locality” as the original business. However, two businesses providing the same business using the same surname in different cities and counties (Mebane and Asheville) were not “in the same locality”.
Therefore, it remains possible that a subsequent business may legally establish itself and perform the same services under the same name in an adjacent city or county.
The only other possibility of protecting your business’ name when it incorporates a surname is for that business to establish a secondary meaning. “Secondary meaning” is attained when a particular business has used words in public commerce for so long or so exclusively or when it has promoted its product to such an extent that the words do not register their literal meaning on the public mind but are instantly associated with one enterprise. (For a more thorough discussion of secondary meaning see “Creating a Strong Trademark” http://www.kirksanderslaw.com/blog/how-create-strong-trademark-tradmark-attorney-winston-salem-nc ).
It is important to note that North Carolina courts do not consider the likelihood of consumer confusion when determining whether two businesses using the same surname can co-exist. The courts have limited their analysis to whether the subsequent business’ use is fraudulent and in the same locality and whether the original business has established a secondary meaning.
Call Sanders Law Firm 336-724-4707 for Trademark (TM), provisional patents, and copyright services.
Please note that the above include general rules, each matter is fact specific and should be verified with legal counsel to determine how the law applies to your specific facts.