A “Trade Name” Is Not A “Trademark”
Did you know that your business name, i.e., your “trade name,” is not a trademark? Many people use the terms trademark and trade name interchangeably and this causes confusion in the business community. Trade names are how we identify our businesses. Trademarks are how we identify our products, and while we’re at it service marks are how we identify our services.
It’s more than just semantics. Trade names cannot be federally registered unless they also serve to function as a trademark or service mark. This is significant since “trade names” can be highly valuable and businesses generally want to protect their trade names from infringement. No business wants a competitor to adopt a similar trade name or even a similar trademark or service mark for a product or service, as that could create confusion in the marketplace and result in lost sales. Worse yet, no business owner wants to launch his or her business and later need to change the name due to a claim of infringement from a competitor. So how does a business be sure that its trade name is available for use and then protect the trade name from infringement?
Fictitious Name Registries v. U.S. Patent & Trademark Office
First it’s important to understand that there are different registries involved in protecting trade names and trademarks. If you are setting up a new business the state where you are doing business may require you to register your trade name as a “fictitious” or “doing business as” name. The U.S. government maintains a website at Business.Gov that specifies requirements and includes links to each state’s registries. See: http://www.business.gov/register/business-name/dba.html
While achieving registration as a “fictitious name” or as a “doing business as” name in your state is significant it does not mean that the trade name is available for use, i.e., will not infringe upon another’s rights, or that it is available for federal registration at the United States Patent and Trademark Office. So what should you do?
Determining Availability of Your Trade Name
Given the importance of your business name you should consider having a Trademark Attorney obtain and analyze a thorough availability search for you before you name your business. The search should include the U.S. Patent and Trademark Office records, the State Trademark records, fictitious name registries, and databases that may unveil common law uses of trade names, trademarks and service marks. Common law uses are uses of trade names, trademarks and service marks that are used but not registered. In the United States simply using a trademark or service mark can give the user rights. So this is a complex task.
Could you do this search yourself? Yes. Should you? Probably not. Searching is an art and a science. Trade names, trademarks and service marks do not need to be identical or nearly identical for there to be infringement. Even if you conduct a thorough search analyzing the results is better left to someone specializing in trademark law. The field is far more complicated and fraught with pitfalls than it might first appear. This is your business name, you want to own it and use it for a long time. You should consider obtaining appropriate legal assistance to help you do this. Be aware that a general practice lawyer that helps you incorporate and file your “fictitious” name application may not be a Trademark Attorney, and so you may want to obtain a specialist for this purpose.
Protecting Your Business Name
Once you have searched the business name and feel confident of its availability you will want to consider whether federal registration is appropriate. Federal registration confers many benefits, including serving as a legal presumption of your ownership in the trademark and your exclusive right to use the trademark nationwide in connection with the goods or services identified in the registration, serving as public notice of your claim of ownership in the trademark, the right to use the registration symbol ®, the ability to record the U.S. registration with U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods, and the ability to bring an action concerning the trademark in federal court.
Generally, if your business name is used in more than one state, either through advertising or the shipment of product, and is distinctive, it may be possible to register the name at the U.S. Patent and Trademark Office if it is used properly as a trademark or service mark.
While trade names cannot be federally registered in and of themselves, they can be used in such a way that they become trademarks or service marks and are capable of registration. Often trade names are used as “secondary trademarks”, i.e., terms and logos that appear on product packaging in addition to primary trademarks. Sometimes a company will take the most distinctive term or terms in its trade name and incorporate it within a logo. For example, Pfizer Inc., a well known pharmaceutical company, has registered PFIZER within a tilted oval shape, see below. This trademark appears on the packaging for their pharmaceutical products in addition to the trademarks for their drugs. Other examples include the famous ice cream producer, Ben & Jerry’s Homemade, Inc., which has registered the logo below for ice cream. While it is not necessary to include the distinctive portion of the trade name in a logo format in order for the trademark to be registered, it must be clear to the U.S. Patent and Trademark Office that you are using the term as a trademark in connection with a product or as a service mark in connection with a service and not just as a “trade name” to identify the name of a manufacturer or distributor.
This article is for information purposes only. It is not legal advice and it does not create an attorney/client relationship.
Best of luck with your new business.
Teresa H. Anzalone, Attorney, MBA
Symbus Law Group, LLC
(Office: Gulph Mills, Montgomery County, Pennsylvania)
managing “the symbols of business”