Company Names

The following is a general company name checklist  to employ when selecting a trademark for your partnership, limited liability company, corporation, joint venture or non profit organization.  Company names are the most widely used type of trade name. company names can achieve great value and symbolize substantial good will. Courts have recognized the protectibility of this interest, and the need to protect the general public from confusion.

Generally, the Secretary of State in the state the company is registered is the government entity that approves the company name. Approval means the company name is distinguishable from the name of any other company that is authorized to do business in that state. This approval does not create any substantive rights in the company name. Only actual use of the name in commerce can establish protectible rights that can then be asserted against third parties and establishes priority rights. However, approval to use a company name in a state does not reveal any conflicting, similar, or identical business names in interstate commerce. A search from a state employee to find a conflicting company name within the state will not reveal conflicts with other companies or federal trademarks in that state or other states. Thus, it is not recommended to rely solely on a state approval to use a company name in that state as an assurance that there will either be no legal challenges to the use of the company name or that you will be immune from such a challenge.

Company names are not eligible for trademark registration; however, if the name is used as a trademark, company names are allowed registration under the same principles as other trademarks. In order for registration, it must be determined that the trademark is not solely being used as a company name. The following list provides some general guidelines that could increase the chances of a company name being registrable as a federal trademark with the USPTO:

  • Use the company name as a trademark by writing the name in a distinctive font.
  • Avoid using entity designation (e.g., corporation, LLC, LTD)  followed by a generic name of the good or service.
  • Avoid using the business address in connection with the company name. The address suggests more of a trade name rather than a trademark.
  • Avoid using other trademarks in connection with the company name trademark. This also suggests that the company name is not being used as a trademark.
  • Avoid using phrases such as “made by,” “operated by,” or other informational phrases with the company name.
  • If the full company name is actually used as a trademark, avoid applying to register only part of the name. The USPTO typically only allows registration of full company names, not a portion of the name.

Slogans

Nothing contained within the Lanham Act prevents slogans from being registered for trademark protection as long as the slogan signifies the source of the goods or services and distinguishes them from the goods or services of others. The slogan must be used in the trademark, and displayed conspicuously and consistently, and must not simply be informative. If the slogan is merely descriptive of the goods or services, trademark protection may still be afforded, but only if a secondary meaning is established.

Trade Names

Trade names are names that identify a business instead of goods or services. Trade names are protectible under the same principles as trademarks; however, trade names alone are generally cannot achieve federal registration with the USPTO. Trade names gain protection typically from state laws of unfair competition, common law, statutory law, or under section 43(a) or 44 of the Lanham Act.

While not registrable solely as a trade name, trade names do benefit from trademark law. The use of a distinctive trade name is entitled to injunctive relief against the use of an identical or similar name or trademark if confusion between the two is likely to occur. Likewise, if a trade name is generic, descriptive, or has a surname character, the name is generally not protectible unless a secondary meaning is established. A federal trademark dilution action is also available if a trade name is likely to cause dilution.

Company Name Checklist

To show use as a trade name, a business or organization must show that they have used a name or acronym in a manner that identifies the company by that name or acronym to the public.  A formal adoption of the name or acronym is not necessary.

Trade names may be registered with the USPTO when the trade name is also used as a trademark. The determination if the trade name also functions as a trademark is not easy. The distinction between a trade name used solely as a name and used as a trademark is made on the basis of the use of the term on the specimens offered during the trademark application process, mixed with the commercial impact of such use on the public in the marketplace. If the company name is used to crate an impression that is separate and apart from the company name, this is a proper use for a valid trademark.

Domain Names

A domain name identifies a particular place on the Internet where a “website” is located. A domain name has the ability to be federally registered as a trademark. In order for a domain name to become registrable, the domain name must be used to identify and distinguish the source of goods from the goods of another. If the domain name is used solely to indicate the Internet address and not to identify the source of goods, then the domain name does not function as a trademark and cannot be registered. Therefore, the key to protecting and trademarking a domain name is to use the domain name as a trademark. A clear example of a domain name that is registered as a trademark is Amazon.com.