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Ryan Responds: What’s the Difference Between a Trade Name and Trademark?

Ryan Responds trade name vs trademark

Is a Trade Name and a Trademark the Same Thing, or are They Different?

In this Ryan Responds video, what are the differences between a trade name and a trademark. Short answer: they are different. Much of the confusion comes up nowadays when people are registering their business and trying to come up with the marketing and advertising for it. This is especially true when you add in the registration of domain names and social media accounts; this shall be a future post when it comes to branding strategy and protection in our interconnected world. However, for today’s topic we are focused on just trade names and trademarks.

Critical for Business Owners to Understand for their Marketing and Branding Strategy

If you are launching a new business, then you really need to grasp the difference between these abstract legal terms. It will impact your naming and registration strategy for the business and its brands before you launch. Why? Because you will do a lot of market research prior to registering your business and applying for trade names and trademarks.

I’ve seen many new business owner fail to grasp these intellectual property and business registration issues; they then go through all this energy and expenditure planning for the naming and marketing of their business, only to pay the price in changing registrations and applications, taking down their advertising, and basically upending their whole marketing strategy. They have to rethink their branding. As always it is best to do some research and speak to an attorney prior to taking any action that could make you liable, especially if you are unclear about intellectual property infringement.

Finally, in addition to the video below we provide a one-sheet on the same topic for your reading.

 

If You have a Question for Future Ryan Responds Videos …

Finally, if there is a short question you want the answer to submit them to admin@hewbordenave.com with the Subject line “Ryan Responds”. Please keep your questions short, general, and related to a business topic. Please do not provide specific details of  your matter or attempt to seek direct and specific legal advice through this format. If you need assistance and legal services, then please schedule a consultation with an attorney in your relevant jurisdiction.

If your matter is located in the Hawaii or California jurisdictions, then feel free to reach out to us to schedule an initial consultation here.

Thanks for watching!

RKH

Disclaimer: The content of this video is for general information purposes only. Nothing should be taken as legal advice for an individual cases or situations. The viewing of this video does not create an attorney-client relationship. If you need legal advice, please contact an attorney in your relevant jurisdiction.

What’s the Purpose of a Trademark? How is it Used?

What's the Purpose of a Trademark

LEGAL DISCLAIMER: The following information is provided to be just general information, and therefore, should not be taken as specific legal advice that pertains to any particular situation.  The reader should not base any decisions on the information here to act or refrain from acting regarding a legal problem.  If you believe you have a legal problem please seek legal advice from a licensed attorney in the relevant jurisdiction.
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So it’s amazing how time flies when you have a lot of work to do.  I have been very grateful for these past couple of months for the clients that have come through my door (or via electronic means), but more work means less time for blogging and sharing information to all you interested soon-to-be or current business owners.

Anyway, as some people know I was fortunate last month to attend the American Bar Association’s Annual Conference in San Francisco.  I attended many Intellectual Property, Business Law, and a couple of Employment Law seminars.  When I can, I will update my blog or provide one-sheet resources on the information I obtained from these seminars to share with all of you.

So today’s post is about the use of trade and service marks.  A prior Draw the Law post covered the difference between a trade name and trademark and I have a one-sheet on What is Trademark?.

Purpose of Marks

Before we get to the using of a trademarks, let’s first consider that the purpose of a trademark.  The point of a trademark is to distinguish one company’s set of goods and/or services from another company’s.  Basically, it is meant to avoid confusion to consumers, so they can readily ascertain from the mark which company the goods and/or services are originating from.

So How are Marks Used in Commerce?

A mark can be used on goods (products), which would make it technically a “trademark”.  Specifically, this would mean the mark is applied, engraved, embroidered directly on the goods, POS displays, the use of labels or tags affixed to the good, or shipping labels when sending the goods through commerce.  It is not just merely advertising, but must have a Point of Sale component.

In the case of a mark used in connection with services, clearly there is no tangible part to a service.  Therefore, service marks are found on websites, brochures, advertising (but not printer’s proofs), on or at locations associated with the services, such as vehicles used with the service, or on the uniforms of employees while they perform the service.

How do I Properly Use my Trademark?

You can use ℠ for service marks, ™ for trademarks, and registered trademark symbol (the ‘R’ that has a circle around it) ONLY for registered marks (it is a violation of the law to use the registered symbol when your mark is NOT registered).  Further, the mark should be distinguished from regular text, through the use of quotation marks, larger print, all capital letters, or through colorization of the wording.  Also your grammar lessons are important for trademark usage.  A noun should ALWAYS follow a mark.  The mark should NEVER be used as a verb.  For example, it is a XEROX copier and NOT xeroxing. Or perfect for the web as another example, it is NOT you googled the answer, but it is rather you ran a GOOGLE search.  Finally, the correct spelling should be used and moreover, the mark should not be pluralized.

The point of all this proper usage is to avoid a loss in rights in the mark.  Many trademarks of famous brands have become generic, and generic terms are not entitled to trademark protection.  Consider that the word “escalator” used to be a registered trademark, but the Otis Elevator Company has lost that mark due to it becoming generic.  Therefore, you should be actively policing your trademark usage and avoid losing rights that you worked so hard to create with your brand.

That’s it for this time.  I hope to be back soon with more information to share.

Mahalo for stopping by!

-RKH

 

 

 

It’s all About the Trade, Part I: Trade name vs. Trademark

Last week, I discussed equitable remedies in breach of contract situations.  I would like to shift gears for a while and do some information specifically aimed at startups, as this upcoming weekend is Startup Weekend Honolulu at the Box Jelly, coworking space.  If you have not signed up, you can check out the info here, and recommend trying it once as it is a very unique experience and you meet a lot of people.
My goal with the next month’s worth of posts is to deal with frequent misconceptions by people who are starting up their business.

Anyway, this post and the next one is aimed and clearing up some of the notions about the various “trade” legal aspects. Namely, I will be discussing the difference between trade names and trademarks, and what is a trade secret. I frequently run across clients and people who are very confused when they first start out their business and it is crucial for your legal protection of your business that you get the differences.

Trade Name vs. Trademark: Explaining the Difference

A trade name is NOT the same as a trademark.  While, both are definitely a part of trade and business they both operate and serve different roles.  Let’s use an example to walk through the way these two legal concepts are different.

Let’s say Mr. Joey Nakamura wants to sell his specialty brand of shave ice.  Let’s say Mr. Nakamura ignores my very first Draw the Law post, and does not want to create some kind of business structure with limited liability.  Therefore, he is a sole proprietor, but he does not want to sell his specialty brand of shave ice under his personal name.  So he registers a trade name and does business as JN Specialty Shave Ice.  This is his trade name.

While, developing his shave ice Joey then decides to create several unique flavors that are his signature products.  So he creates the Joey Jabuticaba and Nakamura Nectarine and begins packaging and labeling the bottled flavors as such.  These products in the marketing world are his brand names, which are advertising and marketing terms, but in the legal world these are his trademarks.

Thus the difference is a trade name functions to identify the particular business, and for a lot of people they know this as “doing business as”, but the concept actually includes corporate, llc, partnership, and fictitious names.  It is simply the name you are using to identify your business.

Trademarks, are any words, names, symbols, or devices (or a combination of those things) that are used to identify and distinguish your goods from those of others and to indicate the source of the goods (or services for service marks), even if the source is unknown.

Where the Confusion Comes In

Why do people mix these two up?  Well, it is very easy because many businesses use their name to identify their goods and services, for instance here in Hawaii, “American Savings Bank” and “Hawaiian Airlines” both are a trade name and trademark.  Your name can function both as a trade name and as a trademark, so long as it does not infringe on the rights of another.  Furthermore, a single business can own dozens of different trademarks to identify their various brands.

Why is the Distinction is Important?

Well, for some starting businesses they start out and register a business, then want to use another name.  Therefore they register a trade name thinking they are protected from trademark infringement.  As shown above, they are different and function so.  Further, when you start using your trade name you may be giving rise to trademark infringement on your part.  That’s right your name may be causing confusion in the marketplace because it may exist as someone else’s registered trademark.   At that point you would have to get a new name, which as experienced marketers will tell you is a blow to your marketing strategy and will force a costly re-branding.

So be careful when choosing your business name and be careful on how you market your product or service. See you next week, when I talk about trade secrets.  Startup competitors I’d definitely say you might want to check that one out as well.

*Disclaimer:  This post discusses general legal issues, but does not constitute legal advice in any respect.  No reader should act or refrain from acting based on information contained herein without seeking the advice of counsel in the relevant jurisdiction.  Ryan K. Hew, Attorney At Law, LLLC expressly disclaims all liability in respect to any actions taken or not taken based on the contents of this post.

Law Talk: Trademarks and Internet Branding

Trademark issues are always abound whenever you try to start a company nowadays, is your domain name taken? Is your logo too similar to another? Do I have to pay licensing fees? An issue you don’t have questions about is knowing that legal disputes are costly and expensive as well as having to re-tool your brand.  It may cost more than you wanted upfront, but there are steps you can take to try and safeguard your brand before you implement a marketing strategy.
Join me and Tara Coomans of Akamai Marketing and Social Media Club of Hawaii’s President for this special talk on what is a trademark and what this means for your branding.

Here is the informational flyer:

In addition, if you want to share the information, please use my calendar function by clicking here.

IP Licensing Lesson: Don’t Copy and Paste, Ask and Talk

So people who know me, know that I love video games. So I was excited when I saw Disney’s movie trailer for Wreck-it Ralph, an animated story about a villain who gets tired of being a villain.  In the trailer, one of the signature scenes is the main character attends an AA-style meeting with fellow video games. The amazing thing about this is the sheer amount of characters from different video game companies that appear in this film.
I know many of you reading this may be like, why is that a big deal? It is a big deal because generally the process to secure licensing rights to use copyrighted material or a trademark is expensive and can be extremely time-consuming. However, this article by IGN.com, a site that focuses on mostly video games and other entertainment, interviewed the creators of Wreck-it Ralph. Be aware that characters in video games, cartoons, comic books, etc . . . sometimes have been both registered trademarked and copyrighted, as a strategy to create multiple layers of intellectual property (IP) protection.

I think there is a valuable lesson for business owners who do advertising, graphic design and content creation, and social media marketing in this quote:

But as the film started taking shape, rights issues eventually became a factor. “We went out and met with people in person, which I think is the key,” said Spencer. “When people came in for E3, we would actually meet with all of the companies and talk about the movie. From the very beginning we said, ‘We want to be authentic to your character. What we would like to do is put in an approval process where you look at our animation and you say that we’re being true to the character.'” As the creators noted, most companies were all for it.

Now, later in the article the creators do note there were some arduous processes, like double-checking with Nintendo if it’s characters were being represented accurately, but the lesson is clear ASK and TALK to the IP owner about what you want to do. This is the art of the sale and business deal, and I think authenticity goes a long way.

I have noticed recently many people are flocking to Slideshare to put up their presentations. I wonder, as I look through these well put together presentations, whether or not the people got the IP owner’s permission to use their images, logos, etc . . . . Did you talk to them? I realize it is easier to COPY and PASTE, but I will let you in on a little secret it is also easy to COPY and PASTE a CEASE and DESIST letter with a demand for damages.