Know the Law: Trade names vs. Trademarks – Fact of Fictitious Name

Catherine S. Yao
Associate, Corporate Department
Published: Union Leader
October 1, 2022

Q: I have registered a trade name for my business with the Secretary of State; do I still need to consider trademark protection with the US Patent and Trademark Office?  What’s the difference?

A: Trade names and trademarks can, in some cases, overlap, but ultimately they serve quite different functions.  Simply registering a trade name does not afford the same protections as a trademark registration with the US Patent and Trademark Office (USPTO), nor does it mean that your use will not infringe on the trademark rights of others.  First, let’s take a step back and briefly break down what trade names and trademarks really are.

Trade names, also referred to as fictitious names, assumed names, or DBAs, are essentially formal nicknames for businesses and generally more akin to business names.  The requirements and registration processes for trade names vary by state.  A trade name registration essentially permits you to conduct business under that name and to refer to yourself (your business) by that name.  Registering a trade name does not equate to forming a new or separate business entity; rather, the trade name registration refers back to the entity (be that an individual or company) under which it was registered.

Trademarks, on the other hand, are source-identifiers for goods/services and a registration provides legal protection for your company’s brand.  While trade names and trademarks are different concepts, it is possible to use a trade name in ways that develop trademark rights, such that the name also functions as a trademark.  The manner of use is critical, both in establishing trademark rights and obtaining a registration for the same with the USPTO.  Trademark usage typically entails prominently displaying the trademark in clear connection with certain goods/services.

If you have sufficient and appropriate use of a trademark in commerce, you may be able to apply for registration with the USPTO, which, if granted, creates certain nationwide rights in your trademark.  Notably, trade names, which are registered at the state, county, or other local level, are much more limited in their scope of rights and protection.

Perhaps the main takeaway here, is that registration of a trade name does not extend to trademark rights or protection.  It would be a grave mistake to assume that obtaining a trade name registration provides you with trademark protection or shields you from allegations of infringement.  A trademark attorney can provide guidance regarding your manner of use and the avenues available to protect and register your trade names and/or trademarks.