Posted by Here’s a bit of an interesting scenario (real names withheld to protect and maintain privacy):
I got an email yesterday from Person A who had received a cease and desist letter from Company B. Person A had named their business fairly recently, while Company B had been in business for well over five years using the same name. Both are working in the same industry. Person A had secured the .org domain name, while Company B owned the primary .com domain name.
Company B’s email was not so much a "cease and desist" as much as it was a very kind email asking Person A to reconsider the name considering the equity and trademark work that Company B had already done. Company B also, rightly, stated that they would need to defend all infringements on their trademark (a truism we know all too well in Marketing). From a legal standpoint, if a company does not defend their trademarks legally, it dilutes any and all ability to do so as time goes by.
Person A wanted to know how they should handle it.
Here was my response:
"If you did know that the .com was taken, and had done a basic search to see that the name you were thinking about using was the same as this company, then they are right.
I would also say that if you didn’t do that… you probably should have… and the other company is right.
They are asking you nicely to respect the fact that they have been running a business using the same name in the same industry for some time.
The question is: why did you name your company by the same name?"
It seems simple enough, but I am constantly amazed at how few Businesses use the existing (and free) channels to do basic and preliminary leg work to see who else is out there and what they’re doing.
The lesson is very simple and reminds me of an Entrepreneur’s Conference session title from a few years back: "Is Your Market Researcher Some Yahoo Named Google?"
We all need to be choosing our names wisely. We all need to run every name we’re thinking of using (including mis-spellings and different versions) through the Search Engines. It’s no longer "good enough" to just register a business in your local state or province. Everything is global when it hits the Web (and everything hits the Web), so be smart, be kind and be online. The above scenario was easily avoidable, but now it’s sucking the time and energy out of two Entrepreneurs who should be putting all of their energy against building their business instead.
Nomenclature is a function of Marketing. Maybe legal isn’t, but that doesn’t preclude any of us from doing some preliminary leg work.
Always be Googling.
Never another podcast episode or article 
My general rule of thumb for domains? If I can’t get the .com to go along with whichever extension I plan on using – I don’t bother.
For example, if I want to run something at example.net, I won’t pick it up unless I can get example.com to go along with it. the .com would forward (or sit dormant) but it would secure it to me.
There are exceptions… And I’m often less picky about .ca/.com pairings but it seems to work well overall.
In the case of country level domains, how would you deal with this?
For example, if Person A has a US company under example.com and Person B has a Canadian company under example.ca, and they’re both in the same industry, what happens when one expands over into the other’s marketplace.
I think your advice was spot-on — and I say that as someone who works for an “acronymed” company with more similarly acronymed businesses than I can shake a mouse at.
I also wanted to thank you for your great IAM presentation yesterday. Since then, not only have I “outed” myself as the corporate blog writer — I’m the one who asked the question about that; my boss had been pushing for it all along — but I test-drove your counter-commenting idea and minutes later received our first comment ever (we’re verrry new and under-the-radar at this point). On the content side, the self-promo yammering stops NOW.
Thanks again for the seminar, the blog, the podcasts, the whole lot.
Ive been thinking about starting a new company. I like apples, so i was thinking of calling it Apple. That should be fine right?
🙂
I totally agree with the lesson for someone in company is A’s position when considering a domain name.
I also think there is also a lesson for company B.
If they have already invested as they indicate;
“considering the equity and trademark work that Company B had already done”
They should also have bought up the .org, .info, .etc variations including hyphens. How much one spends on these domains would be relevant to the equity value you have the extent of protection offered.
Spending $30 – $100 a year on a few similar domains may well be worth it versus the hassle, time, and effort of having to deal with those who have made Company A’s mistake.
This is tremendous advice! Unfortunately, I had to learn this lesson the hard way.
Six months after registering my LLC and domain name, I discovered that another company in a similar field had been using an eerily similar name for some time.
Needless to say, for the sake of avoiding headaches and legal hassles, I decided to start from scratch with my domain and website, and even filed for a new LLC.
If only you had written this article two years ago….