Business Law Advisor

[#1]

The laws and terminology associated with trade names and trademarks commonly fall victim to misconception and confusion. Often times people have trouble understanding and even acknowledging a difference between the two. Some issues surrounding the topic arise from the overlapping of tradenames and trademarks. While many companies don't seem to have any correlation between their chosen representations, others incorporate at least part of their trade name in their trademark. Some companies, such as Coca-Cola, use their entire name also as a brand. Confused yet? 

To explain the terminology in the most simple of terms, you can associate trademarks to brand names and trade names to company names.  The trade name used by a company is the official name under which they conduct business. Filing taxes, billing, and formal identification are all examples of issues that could fall under a company's trade name. A trademark would be used to represent and distinguish a company's products in the marketplace; these are the names most generally recognizable to consumers. Words, names, symbols, designs, and slogans are all examples of different possible trademarks.

Registering Your Trade Name 

A trade name (or assumed name, or DBA name, short for doing business as) is a business name that is different than your personal name, the names of your partners or the officially registered name of your LLC or corporation.

For example, let's say Mary Smith is a sole proprietor of a catering company she runs out of her house. Mary wants to name her business Seaside Catering instead of using her business' legal name, Mary Smith. In order to use Seaside Catering, Mary will need to register that name as a fictitious business name with a government agency. Which government agency, depends on where she lives. In some states, fictitious names are registered with the state government; in others, you register fictitious names with the county clerk's office; and in others, there are no laws requiring businesses to register a fictitious business names.

Visit the Business Name Registration page to learn how to register a trade name in your state.

Registering Your Trademark

Choosing to register a trademark is up to the discretion of individual businesses. Trademarks can be registered on both federal and state levels and while not required, are heavily recommended. Registering a trademark guarantees exclusive use, establishes that your mark is not already being used, and provides government protection from any liability or infringement issues that may arise.  Being cautious in the beginning can certainly save you trouble in the long-run. You may choose to personally apply for trademark registration or hire an intellectual property lawyer to register for you.

Federal trademarks can be registered through the United States Patent and Trademark Office. Applications can be submitted online, by using the Trademark Electronic Application System (TEAS), or by requesting a hard copy application and mailing in a paper form. Although both methods are acceptable, filing online is a faster and more cost
effective process.

Before You Submit An Application:

1. Determine if your product is eligible for trademark registration.  Application eligibility is based on the current or intended use of a mark in commerce; marks cannot be registered to simply reserve the rights.
2. Conduct a trademark search. Use the TESS (Trademark Electronic Search System) Database to determine if your mark is already registered and in use by someone else.  If your mark includes any design elements, you must search using the correct design code.  This will save you time and money because the USPTO will not provide any preliminary searches before an application is filed!

As with trade names, registering a trademark at the state level varies from state to state.  The USPTO's page on State Trademark Information can provide you with the appropriate place to look for state-specific
information.  

Visit Business.gov's Intellectual Property page for more trademark information.

[#2]

Excellent break down, I was always unsure of the exact differences. Thanks a million!

Tom Hinsley

Message Edited by JamieD on 09-01-2009 10:36 AM

[#3]

A very useful article with useful links. Thank you great,

now I'm not confused !

Message Edited by JamieD on 09-01-2009 10:37 AM

[#4]

I agree with most of the post, but I do think there are a few things which should be clarified.  I don't mean to get picky, and I believe the poster is very knowledgable about Trademark law but there are a couple points:

1.  Registering your trademark does not really mean that it will guarantee exclusive use.  In other words, the same trademark can be used in other markets.  For instance, Apple Computer can use the word mark "Apple" for their computers, and I can use the same word mark for pencils.

What's more, there may be times when you may register a trademark, and you may have to disclaim certain words or other elements.  You should also know that the weaker a trademark is, the closer your competitors will be able to get to it.  

I'm sure that is what the poster meant to say, but I thought I should just clear that up.

2.  Registering a trademark does NOT provide government protection from potential infringement down the road.  If you were to register a trademark in your state, that registration would not bar a competitor from suing you under Federal Law under the Lanham Act.  And it is possible to be sued under common law for a mark even if you have a USPTO federal registration.  However, registration might provide some sort of sign of good faith and may militate against punitive damages.

Also, when it comes to Trademark law, you should keep in mind that the whole point of trademark law is to protect the consumer from confusion in the marketplace.  Trademarks are referred to as "source identifiers", in other words, those words, logos, assortment of colors, designs, etc. which signify to the consumer who is making or providing those goods or services.  

For more information on trademarks you can go to my sites at trademark patent copyright attorney law or at los angeles attorney lawyer office.

Message Edited by NicoleD on 08-27-2009 09:44 AM

[#5]

If I have a registered business though as an LLC in New Jersey, can someone else use the name in another state? Or would that be considered fraud, as I had the name first in New Jersey. I Think I may need to file for a trademark on a federal level. Thanks for all the information though.

Omer A.

MMORPG and Game Music Site Owner

VG Alliance LLC (New Jersey)

Message Edited by NicoleD on 08-27-2009 09:43 AM

[#6]

You need to register a trademark 'federally' as soon as possible if you want to headaches in the future. Especially if you become big.

John.

VPS Hosting

Small Business Web Host

Message Edited by NicoleD on 08-27-2009 09:43 AM

[#7]

While I agree with the author and some of the people commenting here. If you are a small business sole owner, etc. There is really no need to register a trade mark. As a matter of fact, you can win a legal battle without the registration of a trade if someone tried to sell your brand. Most credit card processing business have no need for trade marks because they are utilizing the brand of Visa, Mastercard, and other to market their business. There are other ways to prove it in court. And as we all know, even a trademark does not really mean that it will guarantee exclusive use because the same can be used by other trademarks.

Message Edited by NicoleD on 06-26-2009 01:03 PM

[#8]

Nice explanation of "trade names" versus "trademarks". I think it's important for business to recognize the importance of getting a trademark if they come up with a new brand name that they think is valuable. We developed a new kind of trade show display and got a patent on it. We call it our "Signature trade show display" and got a trademark on the name as well (when used with trade show displays) to keep other trade show display companies from starting to call their displays "Signature" as well. You've go to protect your brand!

Steve Booth

Trade Show Displays

Message Edited by NicoleD on 08-27-2009 09:44 AM

[#9]

Filing taxes, billing, and formal identification are all examples of issues that could fall under a company's trade name. A trademark would be used to represent and distinguish a company's products in the marketplace. There are a lot of other formal things to be done to succeed in registering your own trade mark.

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Message Edited by NicoleD on 08-27-2009 09:41 AM

[#10]

It is important to note that although there are systems which facilitate the filing, registration or enforcement of trademark rights in more than one jurisdiction on a regional or global basis (e.g. the Madrid and CTM systems), it is currently not possible to file and obtain a single trademark registration which will automatically apply around the world. Like any national law, trademark laws apply only in their applicable country or jurisdiction, a quality which is sometimes known as "territoriality".

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Hoodia Gordonii

My Blog News

Message Edited by NicoleD on 08-27-2009 09:42 AM

[#11]

Hi,

I'm about to register a software application as a trademark, but still haven't searched about how to do this. this article has been very useful. Well now I'm trying to find whether I can register this one. Thanks JamieD.

Alex

Host Color 

Message Edited by NicoleD on 08-27-2009 09:42 AM

[#12]

Great article - keep up the good work.

___________________________________

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Message Edited by NicoleD on 08-27-2009 09:45 AM

[#13]

Thank you for the information. Great to read this. I think both are just the same.
Photo My World

Message Edited by NicoleD on 08-27-2009 09:38 AM

[#14]

I was never aware of the difference between Trade Names and Trademarks, this is an excellent guide and well written article!! ….. BTW, can I have this post on my blog?

_ _ _ _ _ _ _ _ _ _ _ _ _
harrison
Dubai Hotel Apartments
Dubai Hotels

Message Edited by NicoleD on 08-27-2009 09:39 AM

[#15]

If someone is registed in New York and can it be legal if some one try to use same company name in different state?

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Message Edited by NicoleD on 08-27-2009 09:40 AM

[#16]

Registering for a trademark is more important, especially if your product needs long term brand building and awareness. Trade names are a bit uncommon. Queens Locksmith

Message Edited by NicoleD on 08-27-2009 09:40 AM

[#17]

Trade names are more to individual or products who will be developed in some lines. But there are also certain cases where it is used as trademarks. cash for cars |junk car removal

Message Edited by NicoleD on 08-27-2009 09:40 AM

[#18]

This is fantastic information. I really like the whole forum and in times like these when business are struggling to keep up, it is important to know how to legally protect oneself.

 ----------------

Nate Hoffman

Get your <A href="http://www.learninsurance.com/">Insurance License</a> training and <a href="http://www.learninsurance.com/">Insurance CE</a> certification online.

[#19]

Has anyone ever got a trade name registered in Austin, TX on their own? I understand the differnece but how do you get the forms etc.?

[#20]

If you are planning to build a big corporation, trademark is important. But if you wish to be a successful and well-known businessman/entreprenur, you don't need them at all. Message Edited by NicoleD on 08-28-2009 09:47 AM

[#21]

Very useful article! I found some of the comments just as educational as the article itself.  Hats off to the readers of this blog as well!

From a practical standpoint, it seems that a trademark may only be as strong as your will and available resources to defend it should it be challenged.

Bill Fletcher

Orange County Website Design

Message Edited by NicoleD on 09-30-2009 10:27 AM

[#22]

Registering trademark is not easy and quick. The process can takes months in my country. That is why small businesses are less interested in doing it.

Message Edited by JamieD on 09-01-2009 10:38 AM

[#23]

Thank you for the explanations. I was quite confused to differentiate between the two. Now I know that my business needs trademark rather than trade name.

UKproperty

Message Edited by JamieD on 09-01-2009 10:37 AM

[#24]

I like your explanation much. I didn't know before how trademark and trade names are different, lol.. bankruptcy discharge papers

Message Edited by NicoleD on 09-02-2009 09:56 AM

[#25]

We have trademarks for a term or phrase that help our business to build image and market. It is important to register for one when you find a perfect one. It keeps customers to be loyal and makes easier to remember your products.

Message Edited by JamieD on 09-09-2009 10:07 AM

[#26]

I never thought of that and I wish the trade marks and trade Names rules are followed worldwide not just in the US

Hassan Morcel

Dubai Hotels

Message Edited by ZanetaB on 09-14-2009 04:44 PM

[#27]

I have read many posts by JamieD and this posting is also awesome. And its really true that people gets really confused about these two terms trade names and trademarks. And this post may clearify most of them. And it helpe me a lot too.

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Message Edited by NicoleD on 09-21-2009 02:08 PM

[#28]

Great post on the rather confusing terms of trade marks and trade names,thanks for this informative post,cheers

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[#29]

trademarks and trade names definition are very important in any business, and more so in the present scenerio of competition , great info and informative post,

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[#30]

 sometimes the obtaining of the trademarks is too difficult and it may take months and a lot of efforts in it that why some concerns dont go after it                                                                                                         <a href="”http://www.loanmodus.com/">Loan Modification</a>