TMEP 1202.01: Refusal of Matter Used Solely as a Trade Name

This is the October 2015 Edition of the TMEP

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1202.01    Refusal of Matter Used Solely as a Trade Name

The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks and service marks by definition. While a trademark is used to identify and distinguish the trademark owner’s goods from those manufactured or sold by others and to indicate the source of the goods, “trade name” and “commercial name” are defined in §45 of the Act, 15 U.S.C. §1127, as follows:

The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation.

The Trademark Act does not provide for registration of trade names. See In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) (“[T]here was a clear intention by the Congress to draw a line between indicia which perform only trade name functions and indicia which perform or also perform the function of trademarks or service marks.”).

If the examining attorney determines that matter for which registration is requested is merely a trade name, registration must be refused both on the Principal Register and on the Supplemental Register. The statutory basis for refusal of trademark registration on the ground that the matter is used merely as a trade name is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, and, in the case of matter sought to be registered for services, §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.

A designation may function as both a trade name and a trademark or service mark. See In re Walker Process Equip. Inc., 233 F.2d 329, 332, 110 USPQ 41, 43 (C.C.P.A. 1956), aff’g 102 USPQ 443 (Comm’r Pats. 1954).

If subject matter presented for registration in an application is a trade name or part of a trade name, the examining attorney must determine whether it is also used as a trademark or service mark, by examining the specimen and other evidence of record in the application file. See In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994) (holding that DIAMOND HILL FARMS, as used on containers for goods, is a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others).

Whether matter that is a trade name (or a portion thereof) also performs the function of a trademark depends on the manner of its use and the probable impact of the use on customers. See In re Supply Guys, Inc., 86 USPQ2d 1488, 1491 (TTAB 2008) (finding that the use of trade name in “Ship From” section of Federal Express label where it serves as a return address does not demonstrate trademark use as the term appears where customers would look for the name of the party shipping the package); In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 168 (TTAB 1976) (“It is our opinion that the foregoing material reflects use by applicant of the notation ‘UNCLAIMED SALVAGE & FREIGHT CO.’ merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof.”); In re Lytle Eng'g & Mfg. Co., 125 USPQ 308 (TTAB 1960) (“‘LYTLE’ is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression.”).

The presence of an entity designator in a name sought to be registered and the proximity of an address are both factors to be considered in determining whether a proposed mark is merely a trade name. In re Univar Corp., 20 USPQ2d 1865, 1869 (TTAB 1991) (“[T]he mark “UNIVAR” independently projects a separate commercial impression, due to its presentation in a distinctively bolder, larger and different type of lettering and, in some instances, its additional use in a contrasting color, and thus does more than merely convey information about a corporate relationship.”); see also Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) (“That the invoices... plainly show... service mark use is apparent from the fact that, not only do the words ‘BookCrafters, Inc.’ appear in larger letters and a different style of print than the address, but they are accompanied by a design feature (the circularly enclosed ends of two books).”).

A determination of whether matter serves solely as a trade name rather than as a mark requires consideration of the way the mark is used, as evidenced by the specimen(s). Therefore, no refusal on that ground will be issued in an intent-to-use application under §1(b) until the applicant has submitted specimen(s) of use in conjunction with an allegation of use under 15 U.S.C. §1051(c) or 15 U.S.C. §1051(d).