Choosing Your Company’s Name: Corporate Names Versus Trademarks
This post is part of the MyShingle Solos summer series which will run between June 17 and July 3, 2014.
This post is written by MyShingle Guest Blogger Sonia Lakhany
Choosing a name for your company or law firm can be difficult. I am asked often by fellow attorneys about the difference between a corporate name and a trademark, so this article will help clarify.
Let’s start with corporate names. A corporate name is the name of the actual business entity – the name that gets registered with the Secretary of State at the time of incorporation. This is the company’s “official” name. Incorporating with a Secretary of State gives the company the right to use its name for official purposes, such as banking, on legal documents, and as a tax payer.
A trademark, on the other hand, is a particular word, phrase, symbol, design, or a combination thereof (such as a logo) that is the name shown to the public – the public-facing name the company uses in the stream of commerce to identify its goods or services. Trademark registrations are applied for through the United States Patent and Trademark Office (for federal registration), state offices (for state registration), or internationally.
An easy illustration of the difference between corporate names and trademarks is TJ Maxx. TJ Maxx is a trademark for retail department store services, but that is not its corporate name. The corporate name is TJX Operating Companies, Inc., which most of us do not recognize.
A common misconception – among both business owners and lawyers – is that when a Secretary of State allows a company to incorporate with a particular name, the company thereby has permission to use that corporate name as a trademark. The truth is that when incorporation is allowed with a certain name, this does not necessarily mean use of that corporate name does not infringe someone else’s trademark.
Following the example above, let’s say you or your client wanted to incorporate the name TJ Maximum, Inc. A secretary of state is likely to allow that. However, if you or your client began using that name in connection with retail clothing, the owner of the TJ Maxx trademark would likely have a strong trademark infringement claim. The fact that a Secretary of State allowed incorporation with the name TJ Maximum, Inc. is not a defense to trademark infringement.
The bottom line is that corporate names and trademarks are two different things and shouldn’t be confused. If you have any questions about trademarks, please feel free to contact me at Sonia@lilenfeldpc.com.
Sonia Lakhany is an Associate at Lilenfeld PC. She focuses her practice on trademark and copyright prosecution and litigation. In addition to her practice, Sonia is an instructor at the Trademark Institute of Training, where she lectures on trademark law basics and the mechanics of trademark prosecution.
Great post written by a smart capable lawyer. i always thought that if the secretary of state incorporates the name then you can use it no matter what. Now the question is what is the point of getting the name incorporated with the secretary of state? Is it just a legal requirement or does have any benefit?
When you incorporate, you have to incorporate under some name. The secretary of state only cares if it conflicts with another name registered in that state. It doesn’t look at other states, nor does it look at trademark issues.
Some states (such as Ohio) require that law firms be called by the names of the owners, rather than using a trade name (although you can have a firm named after a bunch of dead lawyers). This doesn’t raise trademark issues to the same extent, since the trademark office won’t register a person’s name, if I recall correctly. You still have to worry about another lawyer in the same state with the same last name, however. So, if you’ve been calling your firm “Krane Law Firm” for several years, and some new lawyer named Krane tries to do the same in your state, you may be able to require them to use something else (like Law Office of Bill Krane).
Most sole practitioners around here settle for using their name, followed by either J.D., or Attorney at Law, and sometimes followed by some indicia of corporate organization. I’ve seen trademarked names (Morrison Foerster’s mofo.com comes to mind), but what I’d like to know is, are there benefits to a using a trade name as opposed to identifying the business with the lawyer?
Great article. The generic branding concept makes a lot of sense. I will reconsider my criminal defense law firm website as a result of reading this.
Here in Texas, the model rules of professional conduct prevent an attorney or law firm from using a trade name other than the name or initials of the attorney or attorneys who own the firm. That’s why you see it so often in Texas. Other states may have similar rules. So, it may be that all of the law firms are name based because they are required to be that way.