Only a brief summary of trademark/tradename law is provided here. Consultation with an attorney is advisable to answer specific questions in this area of the law.
A trademark describes goods, whereas a “service mark” describes services; similar principles apply, so as used here, trademark includes service mark.
A tradename is a name used by a person or company to identify his, her or its business or location.
A unique tradename and/or trademark can be very important to a business because the name of the business, its products or services can be all that separates it from its competitors. A unique name allows members of the public to buy the product or service they want, protects the public from being misled, and distinguishes the goods and services of its owner from those of competitors.
Trademarks and tradenames can be protected under state law, federal law, or both. State protection can be either under the common law or statutory. Protection under federal law is mostly statutory.
Under Missouri common law, the right to a trademark or tradename results from the exclusive use of the mark or name in a particular geographical area. Thus, it is possible to have a legally protectable mark or name under Missouri law without having registered it under state or federal registration statutes.
Missouri also provides a statutory system for registration and enforcement of trademarks.
The federal trademark statute, called the Lanham Act, allows federal registration of trademarks and provides for enforcement of those trademarks. However, the act has been interpreted by the courts as also providing federal protection for unregistered trademarks acquired through common-law exclusive usage.
Selection of trademarks, service marks and tradenames should be approached with great caution to avoid infringement on some other person’s or company’s rights. Scott Law Firm can refer clients to specialists who can conduct name-availability searches both statewide and nationwide to ensure that a proposed name will not infringe on others’ pre-established rights. Once a name has been determined not to infringe on others’ rights, Scott Law Firm can assist in registration of the name.
Selecting a name already appropriated by others can be an expensive mistake. While some people believe that acceptance by the Missouri Secretary of State Office’s of a particular corporate name ensures that the name of a company is clear of any tradename/trademark infringement, this is simply not true. The Secretary of State does not perform a name infringement search, but simply checks to make sure that no corporation has a “confusingly similar” name in the State of Missouri.
A company selecting a name already appropriated by another company can find itself not only paying damages for infringement but also having to change its name, with resulting expenses for changing signs, advertising, letterheads, business cards, invoices, etc. This could be a fatal burden for a start-up company.
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