Posts Tagged 'business law'

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

Now that we have those definitions out of the way, what can Greg do to protect his brand name?

Common Law Trademark

Enforceable rights in a trademark or service mark generally arise under common law by adoption and use of the mark in connection with goods and services moving in commerce.  The trademark or service mark rights acquired are enforceable in the trading area served by the user of the mark.  The first user of a trademark or service mark has the right to prevent others from using the same, or confusingly similar, mark in any manner which is likely to cause confusion among consumers, users or customers for the first user.
Before a mark is adopted, a search should be performed to determine whether the mark is available for use as intended, that is, whether the mark may be used on your goods and services without creating the likelihood of confusion, mistake or deception because of similarity to a prior mark.  Adopting a trademark without a search entails considerable risk.  Trademark infringement may be found even if the defendant innocently adopted its mark.  Having a search performed before adopting a mark costs little and makes sense because it helps avoid the expense and aggravation of changing the mark after it has been in use.

Registered Federal Trademark

Trademarks and service marks are often registered with the U.S. Patent and Trademark Office (“USPTO”).  The function of the federal statutes governing trademarks, the Lanham Act, is not to grant trademark rights (since those rights are secured by the common law principles), but rather to provide a central clearing house for trademarks through a registration process.  However, registration can create a presumption of exclusive use and provide significant advantages in enforcement actions.  Also, registration of a mark provides constructive notice of the registrant’s claim of ownership and removes any defense by a subsequent user of innocent, unknowing infringement and in effect gives national scope to a mark that has been used in only a limited geographic area.  Finally, the rights of an owner of a federally registered mark are paramount to the rights of the owner of a state registered mark.

The trademark symbol TM or service mark symbol SM may be used by anyone to alert the public that the name or symbol is claimed as a trademark or service mark.  These marks merely indicate that the user thinks he has a trademark or service mark.  The ® indicates a registered trademark, and can only be used after a trademark registration is received from the USPTO.

Registered Oregon Trademark

The state of Oregon, like most other states, provides for registration of trademarks and service marks.  Registration at the state level does not secure rights beyond the boundaries of the state.  On the other hand, registration in the state of Oregon is inexpensive ($50), easy (the form is on the Oregon Secretary of State’s website, www.filinginOregon.com/forms) and quick (trademark and service mark registrations go through a more detailed review process at the federal level).
Although state registration will not create the same degree of protection beyond the boundaries of the state as federal registration, registration in the state can be a cost effective precaution for a business that has a primary local customer base.  State registration gives you the right to exclude the later use of others of the same or confusingly similar trademark in Oregon only. State registration also provides additional enforcement rights, including minimum statutory damages of $10,000.

Another benefit is that your trademark becomes visible.  When others are conducting searches to decide what trademark to adopt, one of the databases that can be searched is state registrations.  If your registration shows up in someone’s search, they may be persuaded to use a different mark.  Registration in Oregon will not protect you from infringement claims by a possessor of a similar trade name, trademark or service mark (common law or registered).

Assumed Business Name

Any person who does business in Oregon under an ABN must register that name with the Secretary of State. The Oregon Secretary of State will not register a business name which “is not distinguishable on the records…from another assumed business name or from the name of a person.” The registration of an ABN, however, does not bestow trademark or service mark rights on the registrant.  The Oregon statute governing ABNs does not purport to give the registrant the exclusive right to use the name; the statute is intended to protect the public from confusion, not grant a private right.  Do not confuse a trademark registration with an ABN or any other corporate documents filed with state.  For instance, an ABN is filed with Oregon Secretary of State primarily for the benefit of creditors and has absolutely nothing to do with obtaining a protectable trademark registration.  The concept of protecting the name by filing for an ABN is perhaps one of the most common misconceptions in business communities.

So even though Greg, our hard-charging entrepreneur, might put the name of the business on the door, on his business cards and on his letterhead and file for an ABN, he might be prevented from using “Greg’s Gadgets” as the brand for his gadgets and services.  A company has a legal right to use a name as a trademark only to the extent that it does not infringe upon existing trademarks.  Greg should first research the name “Greg’s Gadgets” for potential conflicts and then register the name as a trademark with the appropriate entities.  He might still have more difficulty when he tries to reserve the website http://www.gregsgadgets.com, but that is yet another matter.

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.

Advertisements

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.