By James Juo.

What's in a name? Well, a “trade name” is not the same thing as a “trademark.” It's the difference between your company name and your brand.

To take one example, Doctor's Associates Inc. was the name of the company that later branded its sandwich shops as SUBWAY.

From a legal perspective, a “trademark” functions as an indicator of the source of certain goods or services, even if that source is unknown; distinguishing particular goods or services from those manufactured or sold by others. 15 U.S.C. § 1127 (Section 45 of the Lanham Act). Trademark infringement occurs when there is a likelihood of confusion about the source of goods and/or services. The marks need not be identical to find infringement. The legal test for likelihood of confusion to find trademark infringement looks to a number of different factors including the similarities and differences between them.

A “trade name,” on the other hand, is “any name used by a person to identify his or her business.”  15 U.S.C. § 1127. You can name your company ABC LLC with the Colorado Secretary of State, but that does not prevent someone else from later forming a company with a slightly different name such as ABCD LLC in Colorado, or prevent someone else from later forming a company using the same ABC LLC name in another state such as California.

But what if someone files an application with the U.S. Patent and Trademark Office (“USPTO”) for a trademark that is confusingly similar to your pre-existing trade name? Then you may oppose that application to prevent it from being issued as a registered trademark. And if the trademark registration has already issued before you discover it? Then you may file a petition to cancel that registered trademark utilizing the same tools as that of a trademark opposition.

Prior use of a trade name may be a basis for opposition or cancellation under Section 2(d) of the Lanham Act (15 U.S.C. § 1052(d)), where the trademark so resembles a trade name previously used by another in connection with the goods or services at issue, that a likelihood of confusion may arise. W. Fla. Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 1128 (Fed. Cir. 1994) (“Nothing more than trade name use is required to bar the registration of a mark.”); Martahus v. Video Duplication Services, Inc., 3 F.3d 417 (Fed. Cir. 1993). No particular formality of adoption, display, or registration is necessary to establish a trade name, but that trade name must have been used in a public manner.

But the mere act of incorporation, in itself, is not enough to support an opposition or cancellation based on a prior trade name. Dynamet Tech., Inc. v. Dynamet, Inc., 593 F.2d 1007, 1010 (CCPA 1979); Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 309 (TTAB 1979). Public use, such as advertising and promotional material, of asserted trade name must create an association between the name and your ongoing business for customers or prospective customers. Such analogous to trademark use must have substantial impact on the purchasing public and must create the necessary association with more than an insubstantial number of potential customers. T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996); National Cable Television Ass'n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1578 (Fed. Cir. 1991) (“Prior public identification of petitioner with the name ACE for awards from use analogous to service mark usage is sufficient ground for cancellation.”); TuTorTape Laboratories, Inc. v. Halvorson, 155 USPQ 268, 270 (TTAB 1967) (prior use of a trade name in connection with the sale or advertising of goods or services, if of such a nature and extent to create an association by the purchasing public of the goods or services with the user, is sufficient to establish priority).

The asserted trade name also must be distinctive. Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357 (Fed. Cir. 2001) (noting trade identity rights arise when the term is distinctive, either inherently or through the acquisition of secondary meaning); Fluid Energy Processing & Equipment Co. v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) (finding the asserted prior trade name of “Fluid Energy” was a “descriptive term” that did not establish priority rights). If the trade name is either generic, or merely descriptive without acquired distinctiveness, then the opposition or cancellation will likely fail.

The trademark attorneys at Thomas P. Howard, LLC are experienced in filing and prosecuting trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.