At the Law Offices of Joseph C. Messina, located in Mamaroneck, New York, we understand that one of the fuzziest lines to be drawn in the legal sands of intellectual property is the difference between a trademark and a trade name. Perhaps the simplest answer to that question is that trademarks (and service marks) are applied to goods and services while trade names identify businesses. In practice, however, this distinction and the law that governs it, is not always clear. We can help you understand the differences and assert the benefits and legal protections of both trademarks and trade names.
For more information about our legal practice, Send us an e-mail to schedule a free consultation with the experienced New York trademark lawyers at our Mamaroneck office or via teleconference. The Law Offices of Joseph C. Messina, serves clients from Westchester, New York, to Stamford, Connecticut to Trenton, New Jersey and all areas in between.
Trademark vs. Trade Name Usage
Understandably, most lay people find the law and terminology surrounding trademarks and trade names to be confusing. The formal name of a business is called its "trade name". The name the business uses to market its products and services is called a trademark. All names that identify business entities are trade names. Trade name is a synonym for company name or corporate name.
Each state has business license requirements which involve registering these names with the city, county, or state offices. Corporations must usually register with their Office of Secretary of State.
The distinction between company trade names and trademarks can also be a little confusing because many small businesses use at least a part of their trade name as their trademark. Large businesses commonly use different names for their trade names and their trademarks.
The distinction between a corporate name and a fictitious name can also be confusing. A corporate name is the trade name of a corporation that is registered in the Secretary of State's Office. Normally, the corporate name is followed by a corporate identifier, such as Inc. or Incorporated, or Corp. or Corporation.
In some other instances, individuals or partnerships will adopt a fictitious business name. When they do, they must file a fictitious name statement with the Department of Licensing. To provide notice that a name has been adopted and used as a trademark, it is recommended that the business place a small "™" symbol after the mark, and if the mark registers with the United States Patent and Trademark Office a small ® symbol should be placed after the mark. Such symbols are not used with trade names.
Keep in mind that a trademark is not the name that appears on the sign over the door, nor the name listed in the telephone book. A trademark is, specifically, the mark placed on the goods sold by a business, or the Mark used in advertising and promotion, to identify the particular services provided by a business. This Mark, often referred to as the "brand" distinguishes the actual goods and services traded in commerce by one business from the goods and services of any other manufacturer or provider. A trademark on a product may sometimes use the same name as the trade name of the business that manufactures the goods or provides the services. Or, a trademark may incorporate the trade name. But the trademark is not the same as the trade name. Likewise, a business's "logo" may be used as or in a trademark, but a logo is a trademark only if it is used as a trademark on the goods, or in connection with the services that the business sells.
Considerations for selecting a trade name or trademark
Selecting a trade name is relatively uncomplicated. There are few restrictions. In general, as long as no one in the same market area (usually defined as in the same state in the U.S.) is using exactly the same business or corporate name, then only practicality, preference and community standards matter in the choice of a name.
Even when a company expands into another market (state, territory, country, or continent), where its corporate name, company name, or current business name may be in use by another, the company may still do business in that market under an "assumed" name or "d/b/a" (doing business as) name, as long as the registration to do business in that market correctly identifies the actual person or business entity to be known by the assumed name.
For a number of reasons, the selection of a trademark must be made with care and caution. In addition, to the special and practical concerns related to advertising and marketing, one wants to choose a mark that is either fanciful, arbitrary, or suggestive. Choosing a strong mark that is distinctive is critical. Moreover, a trademark owner will make a considerable investment in time and money when building a brand, and you do not want to select a mark that infringes on a third party's senior trademark rights, is refused by the USPTO, or is impossible to police in the marketplace. We can help you understand and pursue trademark protections that will protect you from trademark infringement.
There are also differences between state and federal trademark laws, procedures, applications, and protections. We can advise you with regard to trademarks as well as any questions you have regarding:
- Copyright infringement and registration
- Intellectual property and trade secret concerns
- Domain name issues and rights
- International trademark applications
- How to navigate the U.S. Patent & Trademark Office and other government agencies
- Filing your Mark on the Principal Register and/or Supplemental Register
Contact Westchester County, New York Intellectual Property Attorneys, the Law Offices of Joseph C. Messina, for Complete Representation
Business owners may want to consider whether they use their trade names as trademarks, and if they do, we can help you register them with the U.S. Patent and Trademark Office. Send us an e-mail or call our office at 914-381-2728 to schedule an appointment with a New York trademark lawyer.
