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  • #994527
    BrettM33
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    Hey guys…….. been awhile but thought someone here may be able to help with this.

    I have been developing some software and am getting close to a MVP at which point I am going to try and possibly seek out a partner.

    I already have a name picked out for the software and also have the domain name but I don’t have a company name registered as of yet as I don’t see a need to do that until at least the first public release of the software (which will be a ways off yet).

    When I start talking to potential partners about it however I am a little worried about telling them the name of the software in-case someone tries to get smart and registers the business/company name out from under me or possibly the trademark.

    It took me a long time to come up with a name that I was happy with so I want to make sure the name is safe before I go telling anyone the name.

    What do I need to do to protect myself here? Should I trademark the name beforehand? Would this keep the business/company name left open for me when I wanted to go ahead an register it?

    Thanks!

    #1197027
    Dave Gillen – Former FS Concierge
    Keymaster
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    Hi Brett,

    I think you’ve made a pretty good case for registering the business name, :) but one of our IP experts may be able to add more discussion on the topic.

    Dave

    #1197028
    Rohan@TD
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    Hi Brett, I’m not sure if you are aware of this but registering a business name does not trademark it. I had to examine this extensively late last year regarding an emerging product line.

    Diving into the IP Australia website will provide you a wide range of easy to read information on the ‘trademark’ process. I recommend you start here. Examining the above link will also show you what can and cannot be trademarked. Which may help with your concerns regarding potential partners.

    You do have a range of options to further secure your position, such as using a non-disclosure agreement when discussing your software with potential partners.

    I recommend you register your business name now though. Firstly, it stops somebody else from registering it (potentially unrelated) and it makes it a little more difficult for others to claim it as their own idea (in regards to your mentioned concerns. Finally, it costs around $75 – Pretty cheap when you consider its for your peace of mind.

    #1197029
    BrettM33
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    Thanks guys.

    I’m not sure if you are aware of this but registering a business name does not trademark it. I had to examine this extensively late last year regarding an emerging product line.

    Yeah I’m aware of that; that is why I was wondering if trademarking it was the best idea to go ahead with – but at the same time I don’t think that would stop someone registering the company name if they were to use it for other purposes than what I trademarked it for.

    Also, I’m not 100% sure at this stage but I would probably be going ahead and registering it as a company name rather than business name; but as I understand it that is a lot more expensive and has ongoing fees (ASIC for example) so I didn’t really want to go down that road until I was ready for a public release and/or found a partner to work with.

    I’m also not sure on what the laws are regarding to having to start trading within s certain amount of time once you register that company name…? I’m pretty sure there was something about this when I have registered business names in the past…

    #1197030
    JacquiPryor
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    **cough cough**

    How to politely say this – Brett, if you have a trademark question, just ask me!!

    In short – yes, file the trademark application. This can happen in your name initially (and partners if involved) and if you later incorporate a company, it’s easily changed over.

    You do not have to have a business name or company name etc in order to file for the trademark; you do not need to have an intention even of registering the name. Simply, the trademark application is your way of saying you are using – or intend to use – that name for the goods/services (e.g. software) involved. The trademark is the only registration that actually gives you the ‘right’ to use that name for those goods.

    If another party was to register a business/company name that is the same, in the software space, the registered trademark would let you stop them. It would not automatically keep the business or company name ‘open’ to you though – it would be up to you to monitor and take action if/when needed.

    In my opinion you should:
    a) File trademark application – in your name individually
    b) Still have investors/others sign an NDA or similar when disclosing your software – this can cover more than just the name and can include non-compete clauses etc
    c) Determine (possibly with accountant) if business name or company name is best for your situation (yes, company costs more but it does have its benefit)
    d) If you do incorporate to Pty Ltd for example change trademark over, or, license use of the trademark to your Pty Ltd.

    If you’ve got any questions feel free to ask or shoot me an email :)

    #1197031
    BrettM33
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    Haha [USER=20176]@JacquiPryor[/USER] I obviously thought about asking you but I didn’t want to take advantage of our business relationship and expect you to answer all my questions all the time as I know you wouldn’t charge me; especially as I thought this topic may be a bit more involved than a simple answer; but your answer here is very much appreciated!

    I will follow up with you via an email to go over this a bit more soon enough :)

    Thanks again!

    #1197032
    bb1
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    JacquiPryor, post: 232554, member: 20176 wrote:
    **
    c) Determine (possibly with accountant) if business name or company name is best for your situation (yes, company costs more but it does have its benefit)

    Great advise as usual, just a question in relation to the name, say I have my business name registered as BB1, and next week I decide to become a company, can I keep the same business name as a Pty Ltd (iie. BB1 Pty Ltd), or do I have to have a different Pty ltd name, and just say trading as.

    #1197033
    JacquiPryor
    Member
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    Hi Bert,

    Really, the answer here is ‘yes’ so long as the Pty Ltd version is available. If you already trade as BB1 and BB1 Pty Ltd is found available then you can register that company name – it does not have to be different to the business name.

    If you registered then BB1 Pty Ltd you could either transfer ownership of the business name over to your new company, allowing you to “trade as” BB1 – or, in that case you can simply trade by the company name BB1 Pty Ltd (but you would need to include the Pty Ltd).

    Sometimes people will register a different name for their company, which could be for a variety of reasons – such as the company name not being available, but also if they wish to operate several businesses under the one umbrella – this way you could have (for example) BB1 Group Pty Ltd trading as BB1 or trading as BB1 Maintenance or BB1 Gardening etc.

    Hope this helps?

    #1197034
    Snakeman
    Participant
    • Total posts: 329
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    Yes – first in best dressed with trademarks so take Jacqui’s advice and deal with the trademark matters ASAP. And if not already implied or warned, not all trademark applications are smooth, …. but this depends on the words or logo used and the examiner who gets the job of looking at it.
    At best you have a 7 and a half month wait to get protection for your name and that is if you can even trademark the name.
    …. and if you haven’t already, do wide searches of trademarks, businesses, google and everything else for any other potential users of your name or similar.
    All the best

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