In intellectual property (IP), this question comes about in a different context. There are many misconceptions, misunderstandings, and myths about “names” in IP which create confusion with clients even believing they have rights where those rights have been eroded or, in some situations, those rights never existed. This question gives an opportunity to provide a discussion that helps clarify the differences between “names” in the IP arena.
Corporate/Company Names, Aliases/Trade Names & Trademarks
These categories are often used carelessly as if they were synonyms. They are NOT! From a legal standpoint, each category provides its own IP rights and protection. In order to enjoy the protection afforded by each, an understanding is needed at least as to what each category means. One complicating factor is that a name in IP can fall into some or even all these categories. This may occur depending on how the name is used. Registration with a government agency is often done. One purpose of registration is to create order. Theoretically, a free marketplace by definition is orderless. That is, buyers and sellers freely interact with each other. However, they still need to understand with whom they are contracting and for what they are contracting. Otherwise, sabers get drawn and a free marketplace becomes chaotic. So, listen closely.
A business’s name is merely the name of a legal entity. It is not a brand although it can be used as such. It is obtained by creating a corporation, company, LLC, or the like with a state agency – in most cases the secretary of state’s office. There is no federal agency that creates a corporation or company, so there is no federal registration of the name for this purpose. Creating a corporation or company does not infer any rights to a brand (trademark) nor any other IP rights. Likewise, the mere creation of the corporation or company will not infringe any IP rights of others.
An alias is commonly known as a trade name, and when registered is known as “doing business as” (DBA), “also known as” (AKA), or an “assumed name” (Minnesota). There is no federal registration for a trade name. This, again, is a matter of registration with a state agency. For example, a business is named “Johnson, LLC,” but operates under the trade name “Sunrise Electronics.” The trade name is what customers and the public will see on signs and advertisements. An Assumed Name registration provides a public record of who is doing business under that alias.
A trade name acquires common law trademark rights when it is used to sell goods or services. Common law trademark rights are branding rights acquired through use of the trade name (not simply when the trade name is registered).
Trademarks (brands) are obtained through use of the trademark, not by registration. By “use,” we mean the trademark is used to sell goods or services. Registration provides additional rights but is not the basis for those rights. This is an important point to remember.
There are state registrations and federal registration. In Minnesota, the state registration provides a rebuttable presumption of ownership and nothing more. Registration in other states gives a similar right. A federal registration confers an exclusive right to use the trademark mark throughout the United States and its territories. After five years of federal registration, the owner can obtain an incontestable right to the trademark in an offensive and defensive manner. This means that the owner can assert the trademark offensively against an infringer and, more importantly, this exclusive right cannot be taken away unless the trademark registration was obtained by fraud, the trademark becomes generic or is no longer used (abandoned).
What’s in a name in IP may not be romantic, but it is important.