Trademarks and Trade names, are they the same?
Apples and Oranges, which also happens to be the name and logo of a spa, I recently visited. The simple and quick answer, No they are not the same.
Trademarks are to Trade names as Apples are to Oranges, Mangoes or any other fruit of your choice but not Apples to Apples. They are different types of business assets just as Apples, Oranges and Mangoes are different types of fruit.
A trade name is the official name under which a company does business (aka Doing Business As” name), its assumed name, or fictitious name.
A Trade name does not provide branding protection like a Trademark.
Proof that this is merely a trade name may include that it is advertised in such a way that it does not draw attention as a brand; that it is used in close proximity to an address or phone number or the trade name is associated with another mark. Nevertheless, a trademark, can also be associated with your trade name which is one of the business’ most valuable assets and therefore worth protecting.
For example, a business by the name of “Nina Ranz’s Cakes and Lollipops” is a Trade name, a “Doing Business As Name” and since it is different from the owner’s real name may have to be registered depending on the state.
Trade name Registration.
Trade name registration is done at the county clerk’s office or at the state government level. As with trade names which can be registered at the state level, trademarks can also be registered at the state level which does not necessarily equate to ownership. The mark must be in use in commerce for there to be grounds for a claim to ownership.
Prior to seeking any registrations, it is a good investment of time to do a basic search to determine how the name is being used before building a brand. This approach not only protects against infringement of another’s mark, but also reduces the likelihood that the business name will be confused with your competitors’ brands.
Trademarks and Domain Name Registration.
With the advent of the internet electronic commerce knows no geographical boundaries and therefore the need to also protect domain names. These can also be registered with the USPTO but must be used as a trademark. This means it must identify the “what” as in, used to identify the source of the goods or services and not limited to identifying the website of the business. The domain name being trademarked must be the same or similar for trademark rights to apply.
Jeff Jacobson illustrates this point in “Domain Names, Trade Names, and Trademarks” using Amazon.com as an example.
“Amazon.com is a trademark because the company sells products under the name Amazon.com. Trademark registration for a domain name can be important because trademarks trump domain registrations. In other words, if you register a domain name that is the same or similar to another company’s trademark, the company that owns that trademark may be able to force you to transfer or stop using the domain name. …Therefore, it is advisable to register similar variations of your name as well. It can be much cheaper and less aggravating to secure several variations of your name now than to end up later fighting with an unscrupulous Internet scammer” (emphasis added)
Jacobson also notes that a registered trademark used outside of the U.S. (e.g., Internet sales) allows you to file applications for foreign registration based on your U.S. registration. This allows you to prevent the importation of goods using a mark that is confusingly similar to your mark by registration with U.S. Customs. This got me thinking about these two sites: apples & oranges Beauty Spa which provides products and services that differ from the services of the Apples and Oranges blog.
CAVEAT – This in no way constitutes legal advise but raises a few issues worth considering in terms of seeking optimal protection of one’s hardwork through proper planning.