August 1, 2016
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Enforcement Committee Aims to Minimize Confusion between Trademarks and Trade Names
|Confusion about the relationship between trade names and trademarks is widespread and can cause unanticipated conflicts for business owners unaware of the issues. One of the task forces of the Trademark Enforcement Policy Advocacy Subcommittee of the Enforcement Committee has focused on this issue and is working on raising awareness among business name filers in the United States.
Trade names in the United States are recorded with the Secretaries of State (SoS) in the state of the filer’s business, but most trade name filers don’t have an understanding of the extent of the rights associated with a trade name registration. The misconception that a trade name registration grants a business owner the exclusive right to use the trade name can cause serious and costly run-ins with owners of trademarks filed or used before the adoption of the trade name. Unlike the process for trademarks, trade names are registered with only a limited examination, as a SoS generally only checks the Company Register for identical or similar prior trade name registrations in the state. There is no examination of the trade name for conflict with prior rights reflected on the USPTO database nor typically of the state trademark register, much less any review of trademarks already in use in the marketplace. Yet most trade name filers believe the registration with the SoS gives them the right to use and exclude others from use of the business name.
The task force, under leadership of Paul Williamson (Vold & Williamson, USA) updated an existing “Disclaimer” notice, created by INTA’s Trade Name Subcommittee in the previous committee term, which contains a very brief explanation of the differences between trade names and trademarks and clarifies the scope and restrictions to the rights arising out of a trade name registration, while emphasizing the prudence of conducting clearance searches prior to filing. The group is hoping to convince the SoS to post the Disclaimer on their websites to alert any business name filers to these facts.
Through the connections of Debbie Cohn, INTA’s Senior Director, Government Relations, in INTA’s Washington, D.C., Representative Office, the task force was given the opportunity to submit the Disclaimer, along with a list of FAQs (prepared by the task force tailored to address the average business owner’s potential questions), to the Executive Director of the National Association of Secretaries of State (NASS). These materials are for potential presentation at the NASS’ Annual Meeting this summer. According to the Executive Director, the conflict between trade names and trademarks is a topic the SoS are sensitive about, but to date they have not developed a solution. Depending on the reception of the task force’s paper and position by the SoS, INTA is hoping to have opened up an important channel to advocate for a better understanding of the relationship between trade names and trademarks.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2016 International Trademark Association