Law Tips: IP Issues for Business Start-Ups Part 1 – Trade Names, Trademarks & Service Marks

There are important intellectual property issues involved in representing a business start-up. For instance: How does a business acquire a trade name; and does acquiring any name mean that business always has the rights to it? What’s a valid trademark?  How do you distinguish the person’s service from the service of another person?

Matthew Lees of Campbell Kyle Proffitt LLP, Carmel, defines and addresses IP matters for businesses in our recent CLE on “Developing and Representing the Business Entity.” I am glad to bring his discussion of these challenging and evolving topics to Law Tips. Let’s first hear from Matt on trade names, trademarks and service marks.

Trade Names

1. What is a trade name?
A trade name is a name that is used to identify or designate a particular business, and is not technically a trademark or service mark.

2. How does a business acquire a trade name?
A business may acquire a trade name by adopting a particular name and using it. Simply put, a trade name belongs to the first person. However, a business that merely adopts a particular trade name but fails to use it has no rights to that particular trade name.

3. How can a business determine whether or not it can use a particular trade name?
The Indiana Secretary of State’s office maintains a business entity database, which anyone can search to determine whether a business is operating under a particular trade name.

4.  What limitations are there on selecting a trade name?
I.C. §23-1-23-1 prohibits a business from adopting a name which is similar or confusingly similar to the name of an existing business. Also, a business may not use a trade name that might lead the public to believe that it is a government agency.

5. How may a business protect its trade name?
First, the business can protect its trade name by adopting a name and using it before any other business acquires it. In addition, a business can make sure to register with the Indiana Secretary of State’s office. By doing so, the business and its name will be included in the Secretary of State’s business database.

Trademarks & Service Marks

1. What is a trademark?
A trademark is defined in I.C. §24-2-1-2(9). It is “any word, name, symbol or device or any combination of a word, name, symbol, or device that is used by a person to identify and distinguish goods, including a unique product, of a person and distinguish the person’s goods manufactured or sold by another person and indicate the source of the goods, even if the source is unknown.”

2. What is a Service Mark?
A Servicemark is “a word, name, symbol, device, or combination of a word, name, symbol, or device that is used by a person to identify a service, including a unique service, of a person and distinguish the person’s service from the service of another person and indicate the source of a service, even if the source is unknown.” I. C. §24-2-1-2(8).  Servicemarks include titles and character names.

3. What do I need to do to have a valid trademark or Service Mark?
First, the owner of the mark needs to use the mark in conjunction with its goods and/or services. Your client will not be able to obtain any rights to a particular mark in the event that he or she fails to use the mark in connection with his or her goods or services. This means that your client will not be able to reserve marks for potential future use or otherwise sit on the mark to prevent a competitor from using it.

Second, in order to be afforded the protections of the Indiana Trademark Act, your client will need to register the mark with the Indiana Secretary of State. Registration is done through the Business Services Division of the Indiana Secretary of State. The owner of the mark will need to complete an application for registration and that form can be found on the Secretary of State’s website.

Thanks again to our faculty participant, Matthew Lees, for allowing me to share these business law tips. I know you’re thinking of numerous other IP areas that need attention when developing a business. How about “ remedies involving unfair competition” or “what to do when trade secrets are disclosed?”  Next week’s Law Tips shares Matt’s assistance with these and other key business start-up concerns.

Need a comprehensive update on “Developing and Representing the Business Entity?”  Take advantage of the upcoming Video Replays or the Online On Demand Video.

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About our Law Tips faculty contributor:
Matthew T. Lees is an associate with Campbell Kyle Proffitt LLP. He was admitted to the bar in Indiana in 2008. A graduate of Butler University he received his law degree in 2008 from Indiana University Michael Maurer School of Law. Prior to joining the firm, Mr. Lees worked for the United States Securities and Exchange Commission’s Division of Enforcement in Washington, D.C.  Mr. Lees focuses his practice in business law and transactions, corporate law, civil litigation, business litigation, family law, divorce, estate planning, and will and trust contests.

About our Law Tips blogger:
Nancy Hurley, Law Tips blogger, has long-standing connections with Indiana lawyers. She was formerly a member of the ISBA and IBF staffs for over 30 years. Nancy’s latest lifestyle venture is with ICLEF. We are utilizing her exceptional writing and interviewing skills while exploring how her Indiana-lawyer background fits with ICLEF’s needs. When she isn’t ferreting out new topics for Law Tips, her work can be found in our Speaker Spotlight blogs, postings on the ICLEF Facebook and Twitter pages, and other places her legal experience lends itself.

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