Trade Names Under the Law
Naming your business is critical. For many entities, a name is an asset that can be leveraged for success in the marketplace. Most business owners will want to protect their trade names. This can be accomplished through registration and following state laws. Trade names can be registered in state offices, such as the county clerk’s office, and in some states there is common law protection when two businesses have names that are confusingly similar.
If you name your sole proprietorship, partnership, corporation, or LLC anything besides your own name, in many states you will need to register it with a state authority as a “doing business as” or DBA name. Trade names are the official names under which companies do business, and they are used to identify companies, businesses, or partnerships, not goods or services. They are also known as “fictitious names” or “assumed names.”
You may be wondering whether you can trademark your trade name. To the extent that trade names solely identify the business and not the source of goods or services, they cannot be registered under the Lanham Act. There is no brand name protection for a trade name that is solely a trade name. However, you can use your name as a trademark and register for federal trademark protection of a trade name if your business sells or provides services in interstate commerce under a trademark that is the same as your trade name.
Overlap Between Trade Names and Trademarks
While a trade name is not usually considered a trademark or service mark, it can be entitled to protection under trademark laws if it is used by the business to identify products or services and it is distinctive enough. For example, the Snapple Beverage Corporation manufactured goods whose source could be identified by the “Snapple” trademark. Apple Computer Corporation sells personal computers under the trademark “Apple.”
The trade name will not be considered entitled to protection under trademark laws, however, unless it actually identifies and distinguishes a product or service of the business. It can be a good idea to obtain trademark protection for a trade name that is also used to identify your goods or services by filing an application to register the mark with the United States Patent and Trademark Protection Office (USPTO).
Before you choose or try to register a trade name, you should see whether the name is already in use in your state or in the United States. You can determine whether the name is used in your state by researching your state’s database for registered corporations, partnerships, or LLCs. You can also conduct a trademark search with the USPTO. If you register in your state, you can prevent businesses in the same state from using the same name. However, if you want to market your service to more than one state or across any border, you will want to register your mark with the USPTO.
Registration with the USPTO puts everyone in the United States on notice of your trademark, and it is a prerequisite to filing a trademark infringement lawsuit. If your mark becomes famous, and a competitor uses the trademark or a similar mark in a different market, you may be able to stop the competitor from using your mark by filing a trademark dilution lawsuit. For many small businesses, it is easier to obtain state trademark protection for their trade names than to register with the USPTO.
