When forming a legal business entity, the business owner is required to register the entity’s legal name with the Secretary of State for each state in which it will conduct business. A legal name includes the suffix, “Inc.,” “Co.,” “LLC,” “LP,” etc., to identify the underlying business structure. At the state level, business owners will often also register trade names or “doing business as” (DBA) names so its customers or clients can recognize the business by a shorter name. It is most common for a trade name to be identical to the registered legal name, but without the suffix identifying the business structure. For example, Apple is the trade name for the legal entity Apple Inc., and Walmart is the trade name for the legal entity Wal-Mart Inc. The ability for a business to register a legal name or trade name with any Secretary of State in the U.S. does not automatically confer to the business the trademark rights in those names.

The Trademark Act defines a “trade name” as “any name used by a person to identify his or her business or vocation.” A designation used merely as a trade name is not registrable as a trademark. However, a trade name may qualify for trademark protection if the applicant provides evidence of trademark use associated with the designation.

Recently, the Trademark Trial and Appeal Board (TTAB) affirmed a refusal to register the proposed mark EXPERIMENTAL AND APPLIED SCIENCES because the designation functioned only as a trade name, and the applicant failed to establish evidence of acceptable trademark use. The distinction between trade name use and trademark use is often difficult to make. (In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 167 [TTAB 1976]).

Determination of whether a designation used as a trade name also functions as a trademark is ascertained on a case-by-case basis by analyzing the way the name is used and its probable impact on purchasers and prospective purchasers. Considerations include whether applicant has done any of the following:

1. used its full corporate name or entity designation;
2. capitalized its name;
3. utilized its name in the same lettering style as other matter;
4. used its name in a significantly bolder or larger style of type; or
5. displayed its name in a contrasting color. (In re Univar Corp.)

The specimen that applicant for the EXPERIMENTAL AND APPLIED SCIENCES mark submitted is reproduced below:

The Board noted that the proposed mark is displayed in only one location, which is on one line of a four-line group all sharing the same color, and in identical or at least nearly identical font size and style. The Board also noted that the proposed mark is directly above a physical address, phone number, and web address, which is indicative of trade name usage. The Board agreed that “applicant would be hard put to present the terms in a less prominent manner” as shown on the above specimen.

When weighing the relevant factors, the Board determined that the proposed mark would be perceived by purchasers and prospective purchasers as only a trade name serving to identify the entity developing and manufacturing the underlying goods, rather than as a mark that identifies the applicant’s goods and distinguishes them from those of others. Therefore, the refusal to register EXPERIMENTAL AND APPLIED SCIENCES was affirmed, as the Trademark Act does not provide for the registration of a trade name.