Trademarks vs. Company Trade Names

At the Law Offices of Nikki Siesel PLLC, 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 Nikki Siesel PLLC, serves clients from Westchester, New York, to Stamford, Connecticut to Trenton, New Jersey and all areas in between.

Understandably, a lot of people have a hard time deciphering the different legal implications that stem from acquiring a “trade name” and the legal consequences of registering a “trademark”. The easiest way to comprehend the differences is to think about it from the perspective of the business owner. The formal and legal name of the company will be the trade name, sometimes referred to as a corporate or company name. However, the name one applies to the products or services is the trademark.

Usually, the corporate name is followed by a corporate identifier, such as Inc., Incorporated, Corp. or Corporation. Every state maintains legal requirements that dictate where a company’s trade name will be registered. For example, some states mandate a company’s trade name be registered in a county office while others require the registration in a state office. It is routine practice to have business entities register in the Office of their Secretary of State.

The trademark performs a different function than the trade name. The trade name identifies the company while a trademark distinguishes and identifies the source of the goods or services. Confusion can also emanate from the common practice of some businesses including part of or all of the trade name in the trademark. While other businesses will not incorporate the company name into a trademark, but will utilize entirely different terms for its trademarks. When using trademarks in commerce, it is critical to notify third parties that a term has been adopted and used as a Mark. To properly advise others of your trademark rights, it is strongly recommended that the trademark owner place the ™ symbol after the trademark, and if the Mark has been issued a Certificate of Registration from the United States Patent and Trademark Office a ® symbol should be indicated after the trademark term. The ™ informs others that you are claiming common law rights in a Mark. The ® symbol is constructive notice to others that you own an exclusive and nationwide right to use the Mark in connection with the goods and/or services identified in the registration. It is also crucial that when you are using your trademark, you do so in a manner that sets it apart from the rest of the text, such as placing the trademark term in a stylistic font, in uppercase letters, or all in bold lettering. Lastly, trademarks should be used as adjectives not as nouns or verbs.

If a business owner believes that since they formed a business entity and registered the trade name with the Office of their Secretary of State, it is therefore entitled to use the trade name as a trademark, this would be a serious misconception that can have severe legal ramifications. This business owner could be infringing on another party’s trademark, and thus exposing its business to a lawsuit that could carry significant monetary damages. Simply because the State allows you to use a name to identify your business, does not mean you may also market your goods and services under this same name. A Different set of criteria is used to evaluate and clear the use of a trade name from that of a trademark. A proper clearance search must be conducted prior to using a trademark in commerce, even if you registered the same term as a trade name.

To set up a free consultation, send us an e-mail or call our office at 914-949-9550. Our lawyers provide legal representation to individuals and businesses in New York, Connecticut and across the nation.