You might be like me when I decided to
start my sole trader business and my company Obygrace Publishing, confused about:
- · the differences between legal names, trade names , brand names and trademarks
- · how to register my businesses
- · if registering my trade name gives me legal protection (i.e. gives me unlimited rights to the name)
- · how to register my trademark
- · if I could register my trade name as my trademark
- · what is acceptable as a trademark
In preparing this article, I am hoping to
not only provide the definitions, similarities and differences of these terms;
but also how you can register your business and your trademark(s).
How are legal names, trade
names, brand name and trademarks different?
What
is a Legal Name?
The legal name of a business is the name of
the person or entity that owns a business. If the business is a partnership,
the legal name is the name given in the partnership agreement or the last names
of the partners. For limited liability companies (LLCs) and corporations, the
business' legal name is the one that was registered with the state government
in the US or Companies House in the UK. These names will often have a “legal
ending” such as Ltd, LLC, Inc. or LLP.
A legal name should be used when
communicating with the government, Companies House, HMRC or other businesses.
For example, the business’ legal name should be used when filing annual
returns, tax returns, buying property, or writing checks.
Trademarks are legally protected, while brand names are not. Trademarks and brand names are essentially the same thing. The only difference
between the two is that a trademark is registered with the Patent and Trademark
Office.
Registration of a brand name as a trademark affords the owner of
that trademark legal recourse if someone else uses that name.
Brand Names Defined
According to the UK Intellectual Property
Office, the term 'brand' is sometimes used synonymously with 'trade mark', but in
commercial circles the term 'brand' is used in a much wider sense. A company's
brand refers to a combination of tangible and intangible elements such as the
trade mark, design, logo and also the concept, image and reputation associated
with that business.
For example the Disney brand is a very
strong example which conjures up the whole ethos and experience that Disney is
known to offer, not just their actual trade mark or logo.
The Black coffee website
article, creating a Brand Name states that brand names are signals that carry
meaning in the minds of consumers. A brand name should be memorable so that it
carries a favourable image of your business in the minds of customers you wish
to attract. When people see or hear the words Kentucky Fried Chicken or
Wal-Mart they immediately know what those brands stand for. These brand names
are also trademarks of these companies.
Brand is the "name, term, design,
symbol, or any other feature that identifies one seller's product distinct from
those of other sellers". Initially,
Branding was adopted to differentiate one person's cattle from another's by
means of a distinctive symbol burned into the animal's skin with a hot iron
stamp, and was subsequently used in business, marketing and advertising. A
modern example of a brand is Coca Cola which belongs to the Coca-Cola Company.
A brand – an intangible asset – is often
the most valuable asset of a corporation. Brand owners manage their brands
carefully to create shareholder value, and brand valuation is an important
management technique that ascribes a money value to a brand, and allows
marketing investment to be managed (e.g.: prioritized across a portfolio of
brands) to maximize shareholder value.
Brand
elements [source: http://en.wikipedia.org/wiki/Brand ]
According
to Wikipedia, Brands typically are made up of various elements, such as:
Name: The word or words used to identify a company, product,
service, or concept.
Logo: The visual trademark that identifies the brand.
Tagline
or Catchphrase: "The Quicker Picker Upper" is
associated with Bounty paper towels. "Can
you hear me now" is an important part of the Verizon brand.
Graphics: The dynamic ribbon is a trademarked part of Coca-Cola's
brand.
Shapes: The distinctive shapes of the Coca-Cola bottle and of
the Volkswagen Beetle are trademarked elements of those brands.
Colours: Owens-Corning is the only brand of fiberglass
insulation that can be pink.
Sounds: A unique tune or set of notes can denote a brand. NBC's
chimes are a famous example.
Scents: The rose-jasmine-musk scent of Chanel No. 5 is
trademarked.
Tastes: Kentucky Fried Chicken has trademarked its special
recipe of eleven herbs and spices for fried chicken.
Movements: Lamborghini has trademarked the upward motion of its
car doors.
Customer
relationship management
What
is a Trade Name?
A
trade name is generally considered the official
name under which a company does business e.g. name
a business uses for advertising and sales purposes that is different from the
legal name in its articles of incorporation or other organizing documents. It
is often the name the general public sees on signs, the internet, and
advertisements. A trade name can also be referred to as a “Fictitious Name” or
a “Doing Business As” (DBA). Examples of trade names are the use of the name
"Kodak" by the company whose legal name is “Eastman Kodak Company” or
“McDonald’s” by the company whose legal name is “McDonald's Corporation.”
A trade name may not include Inc., LLC,
Corp. or similar legal endings. Although a trade name may sometimes also be a
trademark, a trade name is not, in itself, a form of intellectual property – this means that a trade name does not afford any
brand name protection or provide you with unlimited rights for the use of that
name. However, registering a trade name is an important step for some – but not
all – businesses.
A trademark is used to protect your brand name and can also be
associated with your trade name. A trademark can also protect symbols, logos and slogans. Your name is one of your most
valuable business assets, so it’s worth protecting.
Trademark Definition
The U.S. Patent and Trademark Office defines a trademark as words,
names, symbols and product design features that are used to distinguish the
products or services of one manufacturer or seller from another, while Wikipedia defines it as a recognizable sign, design
or expression which identifies products or services of a particular source from
those of others. The trademark owner can be an individual, business organization,
or any legal entity. A trademark may be located on a package, a label, a
voucher or on the product itself. For the sake of corporate identity trademarks
are also being displayed on company buildings.
A
trademark may be designated by the following symbols:
™ (the "trademark symbol", which
is the letters "TM", for an unregistered trademark, a mark used to
promote or brand goods and can be used with any common law usage of a mark)
℠ (which is the letters "SM" in
superscript, for an unregistered service mark, a mark used to promote or brand
services)
® or RTM ( (the letter "R" surrounded by a circle or letters “RTM”, for
a registered trademark and may only be used by the owner of a mark following
registration with the relevant national authority )
A trademark is typically a name, word,
phrase, brand, logo, symbol, design, image, any device, label, signature,
letter, numerical, shape of goods, packaging or a combination of these
elements. There is also a range of non-conventional trademarks comprising marks
which do not fall into these standard categories, such as those based on colour,
smell, sound (like jingles), movement or any combination thereof which is
capable of distinguishing goods and services of one business from those of
others.
It must be capable of graphical
representation and must be applied to goods or services for which it is
registered. When a trademark is used in relation to services rather than
products, it may sometimes be called a service
mark, particularly in the United States.
An important reason to
distinguish between trade names and trademarks is that if a business starts
to use its trade name to identify products and services, it could be perceived
that the trade name is now functioning as a trademark, which could potentially
infringe on existing trademarks. 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. If a
trade name is similar enough to another’s trademark that it creates a
“likelihood of confusion” in the mind of a purchaser, it may be infringing the
trademark, which can prove to be a very costly mistake.
Note
Trademarks are recognized as legal property. Companies can sue if
they believe a competitor has infringed on a trademark. Registration with the
Patent and Trademark Office provides protection to trademark owners from
competitors that offer similar or confusing trademarks in an attempt to gain
market share. Trademark registration in your local country (e.g. the United Kingdom,
the United States) can be used as a basis for obtaining registration in foreign
countries. Firms can file registration
with their country’s Customs and Border Protection to prevent importation of
infringing foreign goods.
Trademark Facts
Many famous trademarks started out as unregistered brand names. As
sales for these brands grew, the parent companies registered these names as
trademarks. Some examples include Coca-Cola, which was registered as a nutrient
or tonic beverage in 1893. Ford#039’s trademark for explosive-engines and their
parts was registered in 1909.
The process of business name
registration
Registering a Trade Name
Naming your business is an important branding exercise. If you choose
to name your business as anything other than your own personal name (i.e. a “trade name”), then you’ll need to
register it with the appropriate authority as a “doing business as” (DBA)
name.
Consider this scenario: John Smith sets up a painting business and
chooses to name it “John Smith Painting”. Because “John Smith Paining” is considered a
DBA name (or trade name), John will need to register it as a fictitious business
name with a government agency
You need a DBA in the following
scenarios:
- Sole Proprietors or Partnerships – If you wish to start a business under any name other than your real one, you’ll need to register a DBA name so you can do business under the DBA name. Note that many sole proprietors maintain a DBA or trade name to give their business a professional image, yet still use their own name on tax forms and invoices. If a Sole Proprietor or Partnership in the UK: you’ll need to register for self-assessment and your DBA name through the HMRC (http://www.hmrc.gov.uk/selfemployed/register-selfemp.htm), (https://online.hmrc.gov.uk/registration/newbusiness)
- Existing Corporations or LLCs – If your business is already incorporated and you want to do business under a different name, you will need to register a DBA in the US. If a company in the UK, you must register your company with Company House and HMRC (for corporation tax). HMRC: https://online.hmrc.gov.uk/registration/newbusiness/introduction, Company House: (https://ewf.companieshouse.gov.uk//runpage?page=welcome)
Other
resources:
https://www.gov.uk/set-up-business-uk/register-your-business-in-the-uk,
https://www.gov.uk/limited-company-formation,
Registering Your Trademark
Choosing to register a trademark is up to you, but your business name
and identity is one of its most valuable assets, so it’s worth protecting. http://www.ipo.gov.uk/types/tm/t-about/t-protect.htm
Registering a trademark guarantees exclusive use, establishes legally
that your mark is not already being used, and provides government protection
from any liability or infringement issues that may arise. Being cautious in the
beginning can certainly save you trouble in the long run. You may choose to
personally apply for trademark registration or hire an intellectual property
lawyer to register for you.
Trademarks can be registered through the United Kingdom Intellectual
Property Office. Applications can be
submitted online (online Trademark Services: http://www.ipo.gov.uk/types/tm/t-os.htm,
http://www.ipo.gov.uk/types/tm/t-os/t-os-forms/tm3-introduction.htm , by using the Online Form TM3 ( https://www.ipo.gov.uk/tm3-online/CompleterTypeQuestion/Edit
), or by requesting a hard copy application and mailing in a paper form.
Although both methods are acceptable, filing online is a faster and more
cost-effective process.
Tip: Before you register, you’ll need to follow these steps:
Determine whether your product is eligible for a trademark http://www.ipo.gov.uk/types/tm/t-about/t-whatis.htm
Conduct a trademark search using TESS (Trademark Electronic Search
System) http://www.ipo.gov.uk/types/tm/t-applying/t-before/t-already.htm
Because it can be tricky to identify potential infringement or clashes,
and the penalties for doing so are high, it’s worth talking to a good
intellectual property lawyer to ensure you cover all bases.
For a step-by-step guide to filing a trademark application in the US, FAQs and more, refer to SBA.gov’s
Small Business Guide to Intellectual Property and for UK, click on this link http://www.ipo.gov.uk/types/tm/t-applying.htm
In conclusion, understanding the terms “legal name,” “trade name” and
“trademark” can be confusing; however, each of these terms does have a different
meaning. While there are grey areas, it is easiest to view legal names and trade names
as relating to businesses or entities; trademarks
and brand
names as relating to the products or services of the businesses or entities.
Authors
Information written in black is supplied by Caron Beesley
Information written in green is supplied by Lisa Nielsen
Information written in this shade of brown
is supplied by Gallagher & Dawsey
Co., LPA
Information written in light purple is
supplied by Wikipedia
Information written in this shade of brown
is supplied by UK Intellectual Property
Office
Additional information written in blue is
supplied by OGN.Okafor
About the Authors
Lisa Nielsen is a marketing
consultant for small businesses and start-ups. As part of her consultancy, she
writes advertising copy, newsletters, speeches, website content and marketing
collateral for small and medium-sized businesses. She has been writing for more
than 20 years. She is also a business strategist, trainer and executive coach.
Nielsen holds a Master of Business Administration from the University of Miami.
Caron Beesley is a small
business owner, a writer, and marketing communications consultant. Caron works
with the SBA.gov team to promote essential government resources that help
entrepreneurs and small business owners start-up, grow and succeed. Follow
Caron on Twitter: @caronbeesley
Gallagher & Dawsey Co., LPA
is a unique
intellectual property law firm whose practice includes intellectual property counselling
and services to businesses and individual inventors, as well as other law
firms, regarding patent, trademark, copyright, and trade secret issues.
REFERENCE (to read
more on this topic, you may wish to visit the following links)
OR the Kindle Book: 
