the business of naming your business: distinguishing trademarks and trade names

The Business of Naming Your Business:The Importance of Distinguishing Trade Names and

Trademarks

www.TheKellerLawFirm.com

Presented By: Kelley Clements Keller, Esq.

Cumberland County Bar Association Successful Business Series

What is Intellectual Property?

Intellectual property is a legal concept which refers to the products of human imagination, creativity, and ingenuity that have value in the marketplace and for which exclusive rights are recognized.

Intellectual property laws are strict liability statutes designed to protect intangible assets that contribute to a business’s competitive edge.


Types of IP

Patents New and useful inventions

Copyrights Tangible expressions of creative ideas

Trademarks Words or symbols that serve as indicator of origin

Trade Secrets Info that derives economic value from being held

secret


Why Does IP Matter?

Loss of intellectual property rights can be very costly to a new business.

Infringement

Misuse

Failure to police

Genericide

Mitigate risk on the front end


The New Business:Early Decisions and Early Mistakes

Earliest—and most important—decision:

Choosing a business name

Earliest—and most costly—mistake:

Failing to clear business name for use as a trademark


Trade Name vs. Trademark

Trade Name:

Legal identity—or official name —under which the business is “doing business”

Trademark:

Identifies the product or service

Indicator of origin


Trade Name vs. Trademark

May be one in the same:

Nike, Inc. and

The Coca-Cola Co. and

But different function in the marketplace and governed by different rules


The Trade Name: A State Matter

Secured and regulated at the state level The local state department

PA = Bureau of Corporations and Charitable Organizations

Deemed valid and approved if: 1) not identical or nearly identical to a previously

registered entity; and

2) proper paperwork is completed and filed.


The Trade Name: Your Rights

Gives exclusive rights to the name:

1) as a trade name (not a trademark), and

2) in that state only.

To use the trade name as a trademark :

Name must also be cleared as a trademark.

Nike, Inc. and NIKE®


The Trademark: Goods and Services

Trademark represents the product or service

Serves an indicator of origin

Power, strength, and value built through use of the mark in commerce


The Trademark: Value Through Reputation

Consumers draw an association between mark and product or service (distinct trade name irrelevant)

Strong marks (stronger positive association) valuable marks

The Coca-Cola Co. has used the COCA-COLA brand for 127 years $80 billion brand


Obtaining a Trademark: Use in Commerce

Rights conferred through actual use of a mark in commerce First to use a mark (in a particular territory) is the

first to own the mark (in that territory)

Unregistered marks (common law marks) Legal protection where mark is used (geographically)

Federally registered marks – use in interstate commerce Legal protection nationwide


Trademark Availability vs.Corporate Name Availability

Trademarks (whether registered or not) have no state registration requirement

Thus, trademarks will not be discovered through corporate name availability search


Advising the Client

Avoid adopting a business name with prior common law or registered trademark use

Commission a trademark search and legal opinion from a skilled searcher

Search must cover the records at the U.S. Patent and Trademark Office

Should be extended to cover unregistered common law uses

Will determine availability of name for use and registration as a trademark


Advising the Client

“Knock-Out” U.S. Patent and Trademark Office Common law Internet search

Comprehensive U.S. Patent and Trademark Office Secretary of State trademark registers General and industry-specific common law resources Business name databases Top-level domain names

including .com, .net, .edu, .org, .biz, and .info


The Trademark Search and Opinion

Determines availability for use and registration

Discovers potential infringement problems and areas of vulnerability

Without it, a business is “flying blind” and may end up on the wrong end of a cease-and-desist

Defense to a claim of willful infringement –

reduce to innocent and mitigate damageswww.TheKellerLawFirm.com

Putting It All Together

Small, local businesses often assume they need only clear their names at the state level since they only intend to operate locally

Digital space is a new playing field

Small business are no longer anonymous


Putting It All Together

Federal registration and even pending applications provide nationwide protection Constructive notice

A state trade name registration (or even state trademark registration) will not insulate from liability for trademark infringement


The Takeaway

Every business owner should ask and answer two questions before selecting a business name:

1) Is my name available for use as a trade name?

2) Is my name available for use as a trademark?


Wrapping it Up

Questions?


* Images may be subject to copyright by a third party.

Thank You!


Kelley Clements Keller, Esq.(717) 386-5035

[email protected]@KelleyKeller/YourIPMatters/KelleyKeller

http://www.twitter.com/KellerLawLLC

http://facebook.com/TheKellerLawFirmLLC

the business of naming your business: distinguishing trademarks and trade names

Education

business trademark

trademark trade

trademark search

trademark availability

trademark infringement

state trademark registration

services trademark

new business