The Business of Naming Your Business:
The Importance of Distinguishing Trade
Names and Trademarks
www.TheKellerLawFirm.com...
What is Intellectual Property?
 Intellectual property is a legal concept which refers
to the products of human imaginatio...
Types of IP
 Patents
 New and useful inventions
 Copyrights
 Tangible expressions of creative ideas
 Trademarks
 Wor...
Why Does IP Matter?
 Loss of intellectual property rights can be very
costly to a new business.
 Infringement
 Misuse
...
The New Business:
Early Decisions and Early Mistakes
 Earliest—and most important—decision:
 Choosing a business name
 ...
Trade Name vs. Trademark
 Trade Name:
 Legal identity—or official name —under which the business
is “doing business”
 T...
Trade Name vs. Trademark
 May be one in the same:
 Nike, Inc. and
 The Coca-Cola Co. and
 But different function in th...
The Trade Name: A State Matter
 Secured and regulated at the state level
 The local state department
 PA = Bureau of Co...
The Trade Name: Your Rights
 Gives exclusive rights to the name:
 1) as a trade name (not a trademark), and
 2) in that...
The Trademark: Goods and Services
 Trademark represents the product or service
 Serves an indicator of origin
 Power, s...
The Trademark:
Value Through Reputation
 Consumers draw an association between mark and
product or service (distinct trad...
Obtaining a Trademark:
Use in Commerce
 Rights conferred through actual use of a mark in
commerce
 First to use a mark (...
Trademark Availability vs.
Corporate Name Availability
 Trademarks (whether registered or not) have no
state registration...
Advising the Client
 Avoid adopting a business name with prior
common law or registered trademark use
 Commission a trad...
Advising the Client
 “Knock-Out”
 U.S. Patent and Trademark Office
 Common law Internet search
 Comprehensive
 U.S. P...
The Trademark Search and Opinion
 Determines availability for use and registration
 Discovers potential infringement pro...
Putting It All Together
 Small, local businesses often assume they need
only clear their names at the state level since t...
Putting It All Together
 Federal registration and even pending applications
provide nationwide protection
 Constructive ...
The Takeaway
 Every business owner should ask and answer two
questions before selecting a business name:
 1) Is my name ...
Wrapping it Up
Questions?
www.TheKellerLawFirm.com
* Images may be subject to copyright by a third party.
Thank You!
www.TheKellerLawFirm.com
Kelley Clements Keller, Esq.
(717) 386-5035
kkeller@thekellerlawfirm.com
@KelleyKeller...
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The Business of Naming Your Business: Distinguishing Trademarks and Trade Names

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

  1. 1. 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
  2. 2. 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. www.TheKellerLawFirm.com
  3. 3. 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 www.TheKellerLawFirm.com
  4. 4. 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 www.TheKellerLawFirm.com
  5. 5. 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 www.TheKellerLawFirm.com
  6. 6. 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 www.TheKellerLawFirm.com
  7. 7. 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 www.TheKellerLawFirm.com
  8. 8. 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. www.TheKellerLawFirm.com
  9. 9. 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® www.TheKellerLawFirm.com
  10. 10. 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 www.TheKellerLawFirm.com
  11. 11. 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 www.TheKellerLawFirm.com
  12. 12. 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 www.TheKellerLawFirm.com
  13. 13. 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 www.TheKellerLawFirm.com
  14. 14. 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 www.TheKellerLawFirm.com
  15. 15. 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 www.TheKellerLawFirm.com
  16. 16. 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 damages www.TheKellerLawFirm.com
  17. 17. 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 www.TheKellerLawFirm.com
  18. 18. 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 www.TheKellerLawFirm.com
  19. 19. 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? www.TheKellerLawFirm.com
  20. 20. Wrapping it Up Questions? www.TheKellerLawFirm.com * Images may be subject to copyright by a third party.
  21. 21. Thank You! www.TheKellerLawFirm.com Kelley Clements Keller, Esq. (717) 386-5035 kkeller@thekellerlawfirm.com @KelleyKeller /YourIPMatters /KelleyKeller

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