When starting a business, choosing the right name is critical to building brand recognition and establishing a strong reputation. However, it’s important to understand the differences between a trademark and a trade name to ensure that you’re taking the necessary steps to protect your brand.
What is Trademark vs. Trade Name?
Knowing the difference between a trademark and trade name can be confusing. A trade name is a name that a business uses to operate that is different from its legal name. It is also known as a fictitious name, assumed name, or “doing business as” (DBA) name. However, a trade name does not offer legal protection against other businesses using the same or similar name.
A trademark is usually a name, logo, or slogan that identifies and sets apart the product or service of one person or company from another. A trademark may also be referred to as a registered trademark if it has been legally registered with the U.S Patent and Trademark Office. To register a trade name, you must register your business with the state in which the business will operate. To use the mark legally, you must register it with the USPTO to receive legal protection from infringement of your mark by another person or company.
Benefits of Trade Names
A trade name can offer several benefits to businesses, including brand recognition, legal compliance, flexibility, and cost-effectiveness.
Brand recognition: A trade name can help to establish and promote a brand identity for a business. By choosing a unique and memorable name, a business can differentiate itself from its competitors and establish a strong reputation in the marketplace.
Legal compliance: Many states require businesses to register a trade name in order to operate legally. A trade name is usually required if you aren’t going by the name you’ve registered for your business structure. Registering a trade name can ensure that a business is compliant with state and local laws and avoid potential legal issues down the road.
Flexibility: A trade name can offer flexibility for businesses that operate under different names or brands. For example, a business may have several product lines or service offerings, each with its own trade name. This can allow the business to target different audiences and establish a unique brand identity for each product or service.
Cost-effective: Registering a trade name is often less expensive than registering a trademark. While a trade name does not offer the same level of legal protection as a trademark, it can still help to establish and protect a brand identity for a business at a lower cost.
Benefits of a Registered Trademark
A registered trademark provides several benefits for a business that can help to protect and strengthen its brand. Here are some of the benefits of a registered trademark:
Exclusive Rights: A registered trademark gives the owner the exclusive right to use the mark in connection with the goods or services covered by the registration. This means that no one else can use the same or similar mark in a way that is likely to cause confusion among consumers.
Legal Protection: A registered trademark provides legal protection for the brand by giving the owner the ability to take legal action against anyone who infringes on the trademark rights. This can include suing for damages, seeking an injunction to stop the infringing activity, and requesting the destruction of infringing products.
Brand Recognition: A registered trademark can help to establish and promote brand recognition for a business. Consumers are more likely to trust and purchase products or services from a business with a registered trademark, as it signifies a level of quality and authenticity.
Deterrent to Competitors: A registered trademark can act as a deterrent to competitors who may be considering using a similar mark. The potential for legal action and the associated costs can discourage competitors from infringing on the trademark rights.
Valuable Asset: A registered trademark is a valuable asset for a business and can be licensed or sold to other companies for a profit. It can also increase the overall value of the business and provide a competitive advantage in the marketplace.
All in all, trademarks are an invaluable resource that can give your business a competitive edge and help it to succeed in the long run.
What Could Happen When You Don’t Register a Trademark vs. a Trade Name?
Not registering a trademark or a trade name can leave a business vulnerable to several legal risks, including:
Infringement by Competitors: Without a registered trademark, a business cannot prevent competitors from using the same or similar name or logo. This can lead to confusion among consumers and could damage the business’s reputation.
Legal Disputes: A business that uses an unregistered trademark could be sued by another business that claims to have prior rights to the name or mark. This could result in costly legal fees and damages if the court finds in favor of the other business. Additionally, if you don’t register a trade name because you are not using the name registered with your business entity (LLC/corporation/partnership or your legal name), in FL it is a 2nd degree misdemeanor.
Loss of Business Value: A business that does not register its trademark could lose value over time. If another business registers a similar or identical trademark, it could prevent the first business from expanding into new markets or attracting investors.
Lack of Brand Protection: A business that does not register its trademark does not have the same level of legal protection against infringement or counterfeiting. This can lead to the loss of revenue and damage to the business’s reputation.
Inability to Expand Globally: A business that does not register its trademark may not be able to expand into other countries where trademark registration is required for doing business. This could limit the growth potential of the business.
In summary, not registering a trademark or trade name can leave a business vulnerable to legal disputes, infringement by competitors, loss of business value, lack of brand protection, and the inability to expand globally. By registering a trademark or trade name, a business can protect its intellectual property, establish brand recognition, and gain a competitive advantage in the marketplace.
Do you need both trade name and trademark?
Whether a business needs a trade name and trademark depends on its goals and needs. A trade name is required by many states for legal and administrative purposes, and can help to establish a business’s brand identity. However, a trade name does not provide the same legal protection as a trademark.
A trademark provides exclusive rights to use the mark in connection with the goods or services covered by the registration, and offers legal protection against infringement by competitors. A registered trademark can also enhance the value of a business and provide a competitive advantage in the marketplace.
Ultimately, a business should consider its goals, budget, and level of risk tolerance when deciding whether to register a trade name and trademark. While a trade name may be sufficient for some businesses, others may benefit from the additional legal protection and brand recognition provided by a registered trademark.
PROTECT YOUR BUSINESS NAME OR LOGO AND REGISTER YOUR TRADEMARK
Welcome to the world of business where acronyms and legal terms can be overwhelming. If you’re starting a business, you’ve probably come across the terms LLC (Limited Liability Company) and trademark, but may not understand the difference between the two. It’s essential to understand the distinctions between LLC and trademark, as choosing the right option for your business can have a significant impact on your success. In this blog post, we’ll break down the basics of LLC and trademark, highlight their differences, and provide a clear understanding of when to choose one over the other. Whether you’re a seasoned business owner or just starting out, this post is for you. In this post you’ll learn about LLCs and trademarks, and how they can help you protect and grow your business.
Importance of understanding the difference between LLC and trademark
Understanding the difference between LLC vs. trademark is of utmost importance, especially for entrepreneurs who are starting a business. LLC stands for Limited Liability Company and it is a type of business structure that provides personal financial protection while allowing the company to conduct business as a separate entity. On the other hand, trademarks are symbols or words that identify a brand or product with a particular source. They help to distinguish products from competitors, protect against product counterfeiting, and add value to products. The main difference between an LLC and trademark is that LLCs provide protection from personal liability for debts incurred by the business, whereas trademarks protect the brand name associated with certain products. Having knowledge about these two types of legal entities can be beneficial in making more informed decisions when starting your own business and protecting your intellectual property rights.
What is an LLC (Limited Liability Company)?
An LLC, or Limited Liability Company, is a type of business entity that provides limited liability protection to its members. It is similar to a corporation in that it separates the owners from the business, but it has fewer formalities and regulations. An LLC is formed by filing articles of organization with the state and may be managed by its members or by appointed managers. An LLC offers its owners a degree of legal protection from personal liability for debts and other obligations related to the business; however, this protection does not extend to any criminal activities conducted through the LLC.
Additionally, an LLC provides pass-through taxation so that profits flow directly to each member, who then reports them on their individual tax returns. This structure makes it an attractive option for small business owners who want to limit their personal financial responsibility while also avoiding double taxes associated with corporations.
What are the benefits of owning an LLC?
The most important benefit of an LLC is the limited liability it provides its owners from debts or obligations incurred by the company. This means that any assets owned by the owners are protected in the event of lawsuits or other legal action against the company.
Another benefit of an LLC is its flexible management structure. Unlike a corporation, which requires a board of directors and shareholders, an LLC can be managed by its members according to their agreement. This allows members to customize the management process to fit their needs. Additionally, LLCs have more favorable tax treatment than other business structures since they can generally choose how they want to be taxed.
An LLC also has fewer formalities associated with it compared to corporations or S corporations, making it easier to set up and maintain. The operating agreement is simpler than corporate documents and there are no requirements for issuing shares or holding annual meetings like with other forms of business organization. Lastly, an LLC does not require disclosure of financial information outside of what’s required for tax purposes, offering added privacy for its owners compared to publicly traded companies.
The formation process of an LLC
Forming an LLC (Limited Liability Company) is a great way to protect personal assets from business liabilities and to establish a legal entity for a business in the United States. The formation process of an LLC includes filing Articles of Organization with the Secretary of State or other designated agency in the state where the business will operate. This document must include information such as the name and address of the company, its purpose, any necessary registered agents, and other important details. Depending on the state, other documents are also required such as an Operating Agreement which outlines the management structure and ownership rules of the LLC. Once all documentation is filed and accepted by the appropriate agency, an LLC is officially established.
What is a trademark?
A trademark is a legally-recognized symbol, phrase or word that identifies the source of goods or services. It is used to distinguish products and services from those of other manufacturers or providers. A trademark can be a name, logo, slogan, color combination or any other unique mark associated with a company’s goods and services. In order to be protected under trademark law, a mark must be distinctive and have an association with a particular product or service in the minds of consumers.
The purpose of a trademark
Its purpose is to indicate that the goods or services associated with it are provided by a specific individual or organization, and to distinguish those goods and services from those provided by others. Trademarks also help consumers identify products they may be interested in purchasing, as well as providing assurance that the product has been created under certain quality standards. Additionally, trademarks allow companies to exert greater control over how their products are used and marketed, providing them with a form of legal protection for their intellectual property.
Benefits of having a registered trademark
Having a registered trademark has many benefits. First and foremost, it serves as a way to protect your brand from infringement by others. It grants you exclusive rights to use the mark in connection with your goods or services, ensuring that no one else can use it without your permission. Additionally, it provides you with legal recourse if someone does try to infringe on your rights. Furthermore, having a registered trademark gives you credibility and recognition in the marketplace, as customers will know they are buying authentic products from you and not an imposter. Finally, having a registered trademark allows you to take advantage of certain tax benefits, as well as simplifying the process of registering for other intellectual property protections such as patents and copyrights. All in all, having a registered trademark is an invaluable asset for any business.
Federal trademark registration process
The trademark registration process is a complex procedure that requires careful consideration and planning. First, applicants must conduct a thorough search to ensure that their proposed trademark is available for use, as it cannot be registered if it is already in use by another company. After the search has been conducted, a trademark application must be filed with the United States Patent and Trademark Office (USPTO). This application must include all the necessary information, such as the name of the applicant and the proposed mark itself and what services or goods you’re selling with your trademark. Once the application has been submitted, it will undergo a series of evaluations by government examiners to ensure that it meets all legal requirements. If successful, official registration will be granted and the trademark owner can then enjoy exclusive rights to use the mark throughout its chosen market.
Differences between LLC and trademark
Legal protection is one of the key differences between an LLC and a trademark. An LLC, or limited liability company, provides its owners with personal legal protection from any debts or financial obligations incurred by the business. An LLC protects your assets from being mixed up any legal issues from the business.
On the other hand, a trademark is a form of intellectual property that helps protect the owner’s brand identity and reputation. A trademark can be used to prevent competitors from using similar logos, designs, or words associated with their product or service. It also prevents confusion among customers who may think that two different brands are related because of similarities in their branding. While both provide important protections for businesses, an LLC offers more comprehensive legal protection than a trademark does.
Another difference between an LLC and trademark is that an LLC is a business entity whereas a trademark is not. An LLC can own trademarks as part of its assets, however; and certain benefits associated with having an LLC may be extended to the trademark. Ultimately, both an LLC and a trademark can help protect businesses from legal claims; however, they serve different purposes in terms of business structure and protection of intellectual property rights.
There are a few things that you must consider when it comes to the cost of filing for an LLC and federal trademark. First, cost depends on whether or not you hire an attorney to handle this for you. If you plan on hiring an attorney, the costs can be in the thousands.
Filing fees for an LLC depends on your state. In FL, the fee is $125 plus annual renewal fees. In New York, it’s $200.
Filing fees for a trademark depends on how many trademarks you’re filing for and how many classes you’re filing the trademark under ($250-$350/class). Also, there are additional fees if you file the application on an intent to use basis ($100/class when you file the statement of use).
Should I get a trademark or LLC first?
When deciding whether to get a trademark or LLC first, it is important to consider the purpose of each. A trademark will protect your brand identity and help you legally own any words, names, symbols, or logos used in association with your business. An LLC on the other hand is a type of legal structure which helps protect personal assets and limit liability. It also separates your personal finances from those of the business. Ultimately, it depends on what type of business you are starting and how much risk you are willing to take. If you need to protect valuable intellectual property then a trademark can be obtained first. However, if you are in an industry that is high risk and has the potential for litigation, then an LLC can be obtained first.
Conclusion on the difference between an LLC vs Trademark
The difference between LLC and trademark is crucial for any business owner to understand. An LLC offers legal protection for the owners and limits their liability, while a trademark protects a business’s brand and reputation. Deciding between the two depends on the specific needs and goals of your business. If you’re looking for a formal business structure and liability protection, an LLC may be the right choice for you. On the other hand, if you’re focused on protecting your brand and preventing others from using your name or logo, a trademark may be the way to go. It’s essential to carefully consider your options and seek advice from legal and financial experts before making a final decision. With the right combination of LLC and trademark, you can protect your business and set it up for success.
Understanding the U.S. Trademark Classes is essential for attaining the best results from your trademarks. By choosing a wrong class, or simply not selecting one at all, you could be giving up valuable rights and benefits.
Trademark Class Definition
A trademark is a word, phrase, symbol, design, or a combination of these things that identifies your goods or services.
The USPTO created the trademark class system to help track and categorize goods and services. The USPTO uses the Nice classification system. Many countries also use this system.
There are 45 trademark classes. For example, if you want to protect your business’s name for clothing, it would fall under Class 25, as well as any other apparel that could be sold in a retail store (e.g., hats or belts).
Choosing a Trademark Class
The next step is to determine which trademark classes your product or service falls under, which can be a tricky business. The U.S. Patent and Trademark Office (USPTO) has an entire system of 45 categories that cover a wide range of industries—from food to clothing to arts and entertainment.
To begin your search for the appropriate class, first use the USPTO’s search system to identify existing businesses that have already registered trademarks for a similar product or services. This will give you an idea of what specific wordings other businesses have chosen in their descriptions—this information will help you navigate through all 45 options during your registration process.
You can also type in your products and services in the Trademark ID Manual and it will give you the appropriate class to file under.
If your trademark is “in use”, meaning people can purchase your goods or services, you can only choose the trademark classes for the goods and services in which you are selling.
However, if you plan on launching something in the near future but it’s not available yet for purchase or consumption, then you can file under a class on an “intent to use” basis.
It is EXTREMELY important that you choose the right class, because if you don’t you may end up receiving an office action that you’ll need to respond to to cure the issue.
Most Frequently Used Trademark Classes at Wilson Murphy Law
Because we work with a lot of service based businesses and online course creators, we find ourselves filing under the following classes often.
Class 09: Class 09 is the class you’d use if you have a downloadable podcast, downloadable videos, or downloadable templates.
Class 25: This class is where all of your apparel items are including shirts, pants, athletic wear, hats, and more.
Class 35: This is where all of the advertising and business services fall such as administration, management, marketing, etc.
Class 41: Class 41 is for education and entertainment services. You’ll find event planning, trainings, courses, workshops, concerts, and more under this class.
Which trademark class should you choose?
To put it simply, a trademark class is nothing more than the category that you assign to your trademark. In other words, you use the class to distinguish one mark from the other. For example, if you have a trademark for a product WOW (gadgets) and another based on WOW (cosmetic), you can file them both in different classes of goods/services. If you’re in the process of filing your trademark application, and you’re unsure which class to choose, contact us and we’ll help you with registration process.
Unless you’re living under a rock, you’ve heard about the story of the young lady who put Gorilla Glue in her hair. Many indicated that she thought it was the same as the hair gel, Gorilla Snot.
When hearing about this, my trademark attorney ears perked. And I decided to do my own analysis on whether there is confusion between the two trademarks.
If you’ve ever thought about registering a trademark, likelihood of confusion is one of the analyses that a USPTO trademark examiner goes through to determine whether or not to register a trademark.
When looking for likelihood of confusion, the USPTO looks at many factors when deciding whether or not this would be an issue among consumers.
These are called the duPont factors, which were first listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The duPont factors are as follows (as cited in TMEP 1207.01):
The similarity or dissimilarity of the marks in their appearance, sound, connotation and commercial impression
The relatedness of the goods or services
Thee similarity or dissimilarity of established, likely-to-continue trade channels
The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
The number and nature of similar marks in use on similar good
The existence of a valid consent agreement between the applicant and the owner of the previously registered mark
The first two are heavily weighted, and the rest are considered in a likelihood of confusion determination, if there is evidence in the record.
In this blog post, we are only going to analyze the first two factors (similarity and dissimiliarity of the marks and the relatedness of goods/services).
Is there a similarity or dissimilarity of the marks in their appearance, sound, connotation and commercial impression when looking at Gorilla Glue and Gorilla Snot Gel (Moco de Gorila).
Note: Although Moco de Gorila is the registered trademark, in English, it means Gorilla Snot.The USPTO uses the Doctrine of Foreign Equivalents which means that if it translates to a similar registered trademark or pending trademark application, it can still be confusingly similar.
First, I am going to lay out the definitions of confusingly similar that we get through case law. These are some of the laws that the USPTO adheres to when going through your trademark application.
“Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986).
Additionally, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). And greater weight is often given to the dominant feature when determining whether marks are confusingly similar.
Marks are also compared in their entirety. Although a disclaimed portion of a mark cannot be ignored, and the marks must be compared in their entirety, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).”
In this case, both trademarks have Gorilla in them. Also, when looking at Gorilla Glue vs Gorilla Snot Gel, the USPTO would likely establish that the primary/dominant part of the trademark is Gorilla.
Additionally, “Glue” would be disclaimed because Gorilla Glue is described as an all purpose industrial glue and an all purpose household glue according to the trademark application that was filed. Snot wouldn’t have to be disclaimed because few people reference “snot” when talking about gel, but gel would. This means we are left with Gorilla and Gorilla Snot.
“Even where marks incorporate substantially identical terms, there is no likelihood of confusion if the marks convey different commercial impressions. See In re Hearst Corp., 982 F.2d 493 (Fed. Cir. 1992).”
The argument can be made that even though both have Gorilla, the marks are used with different services which result in a different commercial impression. Additionally, one would argue that “Gorilla Snot” is unitary with two words that can’t be separated and thus portrays a different commercial impression from Gorilla Glue.
Now let’s just take a quick look at the labels.
When looking at the labels, Gorilla Glue has a realistic looking Gorilla drawing on it. And the Gorilla Snot gel has a more cartoon-like gorilla who’s gesturing his spiky hair.
Additionally, the Gorilla Snot label has the additional Spanish translation Moco De Gorila.
And even though one of the Gorilla Snot packaging has similar coloring to the Gorilla glue, the shape and dominant colors are different.
Regarding the similarities of the trademark, the USPTO may find them similar, however there are good arguments that can be made to overcome that position.
Relatedness of goods and services
When looking at relatedness of goods and services, the question that needs to be answered is: Would a reasonable consumer mistake that the trademarks come from a common source, affiliation, or connection?
Below is a table of the goods being sold in association with the respective marks.
Moco de Gorila (translated to Gorilla Snot)
CLASS 001: all purpose industrial glue
CLASS 016: all purpose household glue
CLASS 003: Hair styling gel; Hair styling preparations; Hair styling spray; Shampoos; Hair conditioners; Hair mousse; Hair care preparations.
With respect to the goods here, I don’t believe a reasonable consumer would mistake the two to share a common source.
When going to the store to buy hair gel, you are likely not going to look in the home improvement aisle where Gorilla Glue is sold or go to a store like Home Depot where Gorilla Glue is sold.
Even if you go to a store like Target or Walmart, where both products are sold, you would not find these two products in the same area.
It would be unreasonable to believe that an adhesive for industrial and household glue could also be used in hair. Especially, because this type of glue is hazardous to the skin, as warned on the labels of their products.
In conclusion, I do not believe there is a likelihood of confusion between Gorilla Glue and Gorilla Snot Gel.
After analyzing both products, there are arguments on both sides, however, I do not believe that the USPTO would have a reasonable argument against Gorilla Glue and Gorilla Snot gel co-existing.
This is also demonstrated by both trademarks being registered without issue from the USPTO.
As someone who has used both products, I would never believe that I could have used Gorilla Glue in my hair, nor did I ever connect the two as coming from the same source.
What are your thoughts? Do you believe a consumer would believe that both of these products came from the same source?
A USPTO trademark application can be confusing when trying to determine not only the difference between filing basis (“in use” and “intent to use” applications), but which best suits your needs. The primary difference between these two versions comes down to whether your trademark is already in use commercially, or not, at the time of your application. Ultimately, the circumstances around your mark and how you plan to use it will determine the best trademark application to submit.
Want to learn more about working with Wilson Murphy Law to register your trademark? Fill out the form below and get your client prospect guide.
What are the Differences Between “Intent to Use” and “In Use” Trademark Applications?
Much like their names infer, the main difference between “intent to use” and “in use” trademark applications involves the current usage of it. Are you already using it in commerce, or do you not have a need to do so yet but want it ready for future use? These are the questions you need to ask yourself when submitting a trademark application.
Below is a quick overview of these two trademark application options:
In Use (Actual Use)
When applying for a trademark that is already in use for commerce relating to goods or services currently sold with this mark, Section 1(a) Actual Use Application is the correct option to choose for your trademarking plans. This means that you have put your product out on the market for customers to purchase or consume (if it’s a YouTube channel or blog).
Intent to Use Application
If you have plans to use your trademark in the future, but as of yet have not, a Section 1(b) Intent to Use application is ideal for your situation. If you have a coming soon sign on your website, you have not launched, never sold a product, or have not put any blog posts or videos out for consumption (if filing for your blog or YouTube channel), then you’ll have to file an Intent to Use application.
USPTO Trademark Application Process and Qualifications
Trademark owners that are currently using their trademark will apply by using an “in use application basis. For its registration to be accepted, a Trademark Examining Attorney must have an example of it showing its use in commerce when filed. Failing to do so will delay the process because an Office Action goes to the applicant demanding an active example of the trademark.
The owner will also have to share with the United States Patent and Trademark Office (USPTO) when the mark was first introduced into commerce and used. This means that the trademark is currently in use commercially when relating to products and services listed on the application. For example, if you were to submit an “in use” application for belts and hats, but you only show the mark used for hats, then belts do not qualify for this option.
In this scenario, one can apply under “intent to use” concerning the belts since the trademark has not yet entered commercial use. This flexibility has helped many up and coming entrepreneurs develop branding for products, slogans, and even product names, and have the trademark protection they need before ever entering commercial use.
Don’t Underestimate the Power of a Trademark
Protecting current and future business initiatives and products is of critical importance to maintain competitiveness, highlighting the importance of trademark law. Whether you decide to use an “intent to use” trademark application option or “in use”, this process helps support your efforts to protect your property in a competitive marketplace. And don’t forget, before even starting the trademark process, you need to do a trademark search first.
Necessary cookies are absolutely essential for the website to function properly. This category only includes cookies that ensures basic functionalities and security features of the website. These cookies do not store any personal information.
Any cookies that may not be particularly necessary for the website to function and is used specifically to collect user personal data via analytics, ads, other embedded contents are termed as non-necessary cookies. It is mandatory to procure user consent prior to running these cookies on your website.