What’s In a Name: Trademarks, Service Marks and Trade Names (Part 1 of 2)

To help in our discussion of trademarks, service marks and trade names; we’d like to introduce you to a small business owner named Greg.  Greg has just started a new business in Beaverton, Oregon called Greg’s Gadgets.  He plans to manufacture gadgets and provide maintenance and training services for the gadgets, both under the Greg’s Gadgets name.  Greg properly organizes a business entity by filing formation documents with the Oregon Secretary of State, obtains a taxpayer identification number from the Internal Revenue Service, and puts the name “Greg’s Gadgets” on the door.  Does all this give Greg the right to sell goods and services under the name “Greg’s Gadgets?”

Not necessarily.  A company properly organized and authorized to do business in the state of Oregon under the name “Greg’s Gadgets” does not necessarily have the right to sell goods and services using that name.  To better understand how this could be, a few definitions and some background are needed.

Trademark.  A trademark is any word, name, symbol, device, or combination thereof adopted and used or intended for use in commerce to identify and distinguish goods from those goods manufactured or sold by others. Some examples are Nike for sports apparel, Gatorade for beverages, and Microsoft for software.  The primary purpose of trademarks is to prevent consumers from becoming confused about the source or origin of a product.  Trademarks help consumers answer the question:  “Who makes this product?”  A trademark also gives some assurance of consistency of quality.  Consumers expect that every product sold under a trademark is of like quality.

Service Mark.  A service mark is any word, name, symbol, device, or combination thereof adopted and used or intended for use in commerce to identify and distinguish services from the services of others. Some familiar service marks are:  Amazon.com (retail website), Jack in the Box (fast food service), Kinko’s (photocopying service), Blockbuster (video rental service), CBS’s stylized eye in a circle (television network service), and the FedEx logo (delivery services).  However, there is no legal distinction between a trademark and a service mark and they confer the same rights.

Trade Name.  A trade name is the name under which a company does business.  A company may use a trade name for banking, billing, identification (e.g., yellow pages) and tax purposes, among others.  There are two types of names a company may use for these purposes:  (a) the name provided with the state upon registration as an entity, and (b) an assumed business name (“ABN”), which must be registered with the state separately.

Trademarks identify goods; service marks identify services; and trade names identify businesses.  In practice however, these distinctions and the laws that govern them are not always clear.  The confusion is made still worse because a single word can often be both a trade name (Intel being short for Intel Corporation) and a trademark when used to identify the source of goods and services (Intel Inside).  Starbucks, Hilton, and Coca-Cola are all examples of trade names that also act as trademarks or service marks.

(Check out Part 2 where we will discuss the different types of trademark protection available)

Disclaimer: The information provided in this article is for general information purposes only and should not be construed as specific legal advice.  The application of any matter discussed in this article to anyone’s particular situation requires knowledge and analysis of the specific facts involved.

Contact the Portland Attorneys at Peak Law Group for more information.


2 Responses to “What’s In a Name: Trademarks, Service Marks and Trade Names (Part 1 of 2)”

  1. 1 bancuri noi February 18, 2013 at 2:58 am

    With havin so much content and articles do you ever run into any issues of plagorism or
    copyright infringement? My blog has a lot of unique content I’ve either created myself or outsourced but it looks like a lot of it is popping it up all over the web without my permission. Do you know any techniques to help reduce content from being stolen? I’d definitely
    appreciate it.

    • 2 RSmith March 1, 2013 at 10:36 am

      It is very difficult to stop people from plagiarizing your work. At the very least, it can be helpful to add a copyright notice to inform the public that you are asserting your copyright rights. You may use this notice even without a federal copyright registration. The notice looks like this: “Copyright © [YEAR] [COMPANY NAME]. ALL RIGHTS RESERVED”. You may even wish to consider registering your copyright. Registration is not required for copyright protection, but it does provide the following benefits:
      1. It allows you to bring a legal action for copyright infringement under federal law.
      2. Registration establishes evidence that the copyright is valid if the registration is made within 5 years of “publishing” the written work. “Publication” has a specific definition under copyright law.
      3. Copyright registration may entitle the copyright owner to recover its attorney fees and other legal damages from an infringing user.

      Contact Peak Law Group (ryan@peaklawgroup.com) for more information.

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