Discussion Thought I knew this answer......................

[Texas_Signmaker]

Doing a truck, trailer and job signs for a new customer. He sent me his logo and asked me to size it up and give him a firm cost. I did and we agreed to start. Got the deposit, yesterday. However, I then asked him, how is he allowed to use the name he chose ?? The name is "Pro Cuts". I said, that name is being used by hairdressers, lawn people, landscapers and construction companies all over the place. He said his lawyer did a check and there are no other business in the state of Penna, using this name in his profession. He's safe to use it.

• First, I didn't know it only pertained to your own state. I thought it went from coast to coast.
• Next, I didn't know it only pertained to your exact profession. I thought a name could not be used, regardless of anything, as long as it's registered.

Now, I'm not gonna get into it with him, as he had a team of attorneys check it out and tell him to proceed. I'm just wondering for my own peace of mind.

Gino​

I remember a previous post where you were SOOO sure of yourself and your statements about trade names. Now your SOOOOO sure about it being illegal to have different rules for different employees. If you feel the need to give legal advise, at least Google what your about to say please.

 

[equippaint]

Here for dorks like me that like reading this stuff. Dr pepper suing coke for trying to trademark "zero"
https://finance.yahoo.com/news/u-court-revives-dr-pepper-challenge-coca-cola-170210057--finance.html
My unwanted opinion is to just get rid of trademarks and crap altogether. Worry about beating your competition with a better product rather than beat them through patents and such

 

[letterman7]

From what I remember when I first started, the state (PA) did a name search to see if there was another company of that name. They did the same thing when I started another company 10 years later (still on the graphics side of things). Since the names came back "clean" I had no issues. But.. an acquaintance of mine had a vintage VW shop in Delaware years ago. He called it "Very Wild Car Co." or "VWCC" for short - with no obvious reference to Volkswagen unless you looked for it. Anyway, Volkswagen of America had come out with their premier sedan - the "CC" - and wanted to use VWCC in their advertising, so they sued my buddy for the usage of "their" initials. Since he had been using it for at least a decade previous, Volkswagen lost the case.

So, for your customer's name registration, I would think it's just a state thing unless someone wants to pursue it from elsewhere. If he says its clear, then that's on him.

 

[Terry01]

Is it your job to do signs as requested, or do you run a legal profession on the side??

 

[Gino]

Is it your job to do signs as requested, or do you run a legal profession on the side??

As I've stated several times already, I'm not worried for my customer's benefit, but for my own knowledge. Whether these people do it legal or not, is not my responsibility, but I do like to know if rules, codes, laws or anything has changed and I'm not aware of it.

It's not necessary in the situation I've posted here, but if you are quoting someone..... anyone, for making a sign going on their front lawn....... do you ask if they have the proper permits lined up...... or do you just make a sign and not worry about it ??

 

[equippaint]

As I've stated several times already, I'm not worried for my customer's benefit, but for my own knowledge. Whether these people do it legal or not, is not my responsibility, but I do like to know if rules, codes, laws or anything has changed and I'm not aware of it.

It's not necessary in the situation I've posted here, but if you are quoting someone..... anyone, for making a sign going on their front lawn....... do you ask if they have the proper permits lined up...... or do you just make a sign and not worry about it ??

If the check is good, they can eat it for breakfast for all I care. Ill make suggestions but thats as far as it goes.

 

[Texas_Signmaker]

 

[Gino]

Oh my, but aren't you the little clever one............ and you're so artistic to boot.

 

[bob]

First, it's no concern of yours what name anyone wants to hang on their business. You are in no way responsible for the choices of your client.

Secondly and apropos of nothing, way back Chevrolet came out with a model called the 'Beretta'. This prompted a lawsuit from Beretta Arms claiming foul. The court ruled that since one was a car and the other was a gun there could no confusion and Chevrolet was free to use the name. In light of this decision I thought at the time that Beretta should name their next assault weapon the 'Buick'.

 

[Gino]

Yep, it isn't a concern of mine. I was just wondering after he answered me.

However, there are quite a few businesses with the name Pro Cuts in the exact same business style as this guy. I'm not gonna track them down, not my duty or concern. I don't really care. I just simply was wondering about it, since prior events said totally different from what he had said. Perhaps, all of the businesses listed on the internet, never registered their names. In that case, then I can understand. I thought with any fictitious name, it hadda be registered. Not incorporated or anything like that, just registered, so no one can muddy the waters.

I know two different people with the same last name, same state, same type of business and have had problems their whole careers. The name was Jabip Signs. About 60 miles apart and packages were always getting confused, post office delivered things to the wrong place and so on. Distributors mixed things up, also. The one guy's grandfather started his business back in the late 30's and the other guy in the 70's. Nothing ever came of it, but neither name was registered, as they used their last name and in Penna, that's legal. You're still recognized as a legit business, when using your last name as part of the name.​

 

[DerbyCitySignGuy]

When you register as a DBA or LLC, your name is registered in your state and your state alone. Two companies can't register for the same name in the same state in the same industry, AFAIK. It may vary from state to state. If there aren't any other lawn care companies using the same name, he's probably free to use it.

None of this applies to registered Trademarks, which are an entirely different (Federal) beast.

[Edit: Also, I'm not an IP lawyer, so take all of this with a grain of salt as my understanding of it all is fairly limited.]

[Edit 2: Didn't this get covered like two months ago already?]

[Edit 3: Found it.]

 

[decalman]

Don't worry so much or you'll have a hart attack.
Just don't mess with Harley Davidson. They are A- holes

 

[signbrad]

A trade name is the name of your business or company. A trademark is a name or word or emblem used to identify the goods or services of a company. A trade name may be protected under state statutes or principles of unfair competition. But a name may function as a trademark, and be protected as a trademark, only if it is used to identify its goods or services. Can a name be both a trade name and a trademark? Yes. For example, the name Sony, when used on a company letterhead, is a trade name. When it is used on televisions, it functions as a trademark.

How does a name acquire trademark status? By its use in commerce. This an important principle.


TRADEMARK RIGHTS

When you first use a word or mark to identify the product or service you sell, it becomes a trademark and is protected. In the US, if you register the name with your state you gain greater protection within your state. If you register the trademark with the US Patent & Trademark Office you gain greater protection and it's nationwide. When you register a trademark, the registration dates from your first use of the name in commerce, not the date of the registration. Also, in contrast to copyright law and patent law, trademark rights do not derive from invention, discovery or creativity. In other words, it doesn't matter who came up with the name or who created it. What matters is who first uses the name on goods or services in commerce.
The extent of the protection a trademark enjoys depends on a number of factors according to attorney Richard Stim: "the distinctiveness of the mark, the goods or services, the date of first use, the geographic area in which it is used, and the registration of the mark, if any."
—for a detailed discussion of trademark see Stim's book Intellectual Property, 2nd Ed., chapter 8, entitled Principles of Trademarks.


Is it possible for two companies to have the same trademarked name? Yes. The name Ace is owned by both a hardware chain and a bandage maker. Delta is owned by both a faucet company and an airline. Target stores (US) and Target stores (Australia) share not only a name but a bullseye graphic. The logos look the same except for a difference in the letter style. Yet there is no connection between the two companies and no infringement. Burger King, a restaurant chain, owns the name Burger King except for in a small area in central Illinois. A mom and pop restaurant owns the name in a 20-mile radius surrounding their restaurant, as a result of a court decision made when the owners of the local restaurant sued the corporate chain for infringement. The local restaurant had apparently been using the name in commerce for a long time in its locale. http://www.businessinsider.com/burg...-original-mom-and-pop-burger-king-sign-2013-6



TRADE NAME

Myth: corporate or DBA name clearance equals trademark clearance.

When you form a business, you may register a fictitious business name, also known as a DBA name (short for “doing business as”). This is done in your state or county, depending on your state laws. Or, you may register a name for the purpose of incorporation through your state.

This process involves some kind of “name clearance” through which the state approves your name. This clearance has nothing to do with trademark registration. It is mainly for the benefit of the state so they can keep their tax records straight. It's not necessarily done to keep you from using someone else's name. The clearance process is not exhaustive and in some areas, it is entirely possible for two different companies to register business names that are very similar. Capital Corporation and Capital Incorporated, for example, could both conceivably receive approval for their names in a particular state. Potential for confusion? Yes. But remember, such names would not necessarily be trademarks (used to identify goods or services) but are simply trade names, the names of the two businesses.


On the other hand, if two different businesses used confusingly similar marks to identify similar products or services, so that consumers would have trouble identifying which business produced which, then likely one mark is a trademark infringement of the other.



THE IMPORTANCE OF A TRADEMARK SEARCH

If you choose a business name for your new business and your state does not approve it, you can simply choose another.

If you choose a word to use as a trademark it is a more serious issue. You could spend lots of time and money trying to build your brand by using your mark, buying advertising and printed materials, and then find out that the mark is infringing someone else's mark because it's confusingly similar. This highlights the importance of doing a trademark search first. It's even more important to do a search first if you plan to register your trademark at the state level, or, at the federal level with the US Patent & Trademark Office. Trademark application fees are not refundable and, at least at the federal level, are not cheap.
http://signbrad.com/2017/01/24/trademark-fees-go-up-way-up/

How do you do a trademark search? A Google search is usually inadequate. Even a search on the website of the USPTO may not be sufficient. A state trademark registration won't show up on the USPTO search. There are services that can do searches for you and it may be well worth the money. There are other services that do not do searches, but simply fill out the registration paperwork for you. Beware of false claims and prices that seem too cheap. Or, an intellectual property lawyer can do a search and handle the entire process for you. The trademark process is somewhat complicated. It requires you to do certain things at certain times. A trademark lawyer knows the process. An experienced one can even give you advice on your particular choice for a mark. Such advice could lessen the likelihood of a registration denial, or help ensure that the mark you want to use is not a weak one. Trademark protection can potentially last indefinitely if you follow the rules, in contrast to copyright protection, which lasts only till you die (plus an extra 70 years).

Here is a link to a fascinating series of articles on trademark protection by Erik Pelton, a
Washington, DC, area lawyer. In particular, read Trademark Tip: Words vs Logos. It was an eye-opener for me. I also liked the article, Why suggestive brand names are best.
https://www.erikpelton.com/resources/articles/

Pelton is an intellectual property lawyer and a former USPTO examiner and seems very knowledgeable.



Brad in Kansas City