Generally speaking, you should not include the entity designation as part of your trademark when you file your application.

Often,  business owners confuse their business name (or trade name) with their trademark.  This confusion results in a trademark application for a trademark that includes an entity designation, such as “Inc.,” ” LLC,” or “Ltd.”.  Usually though, when a corporate name doubles as a trademark, the company’s use of the trademark does not include the entity designation.  As such, it would not be correct to include the entity designation as part of the trademark in the trademark application.

A few examples should clarify this point.  The laptop I am using right now is made by Dell Inc., but the trademark that appears on my laptop is simply DELL (in a stylized form with an angled E), not DELL INC.  Similarly, I am drinking a cup of coffee brewed with Peet’s coffee beans.  The bag holding my Peet’s French Roast whole coffee beans is branded with the trademark PEET’S (or PEET’S COFFEE), not Peet’s Coffee & Tea, Inc.   The point is that the trademark that a company uses to market its goods or services is usually different from the formal company name in that it drops the entity designation.

Even if you were to include the entity designation in your trademark application, the Patent and Trademark Office would make you disclaim the entity designation.  In this regard, Section 1213.03(d) of the Trademark Manual of Examining Procedure states

Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity designation has no source-indicating capacity. In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (“PRESS,” as applied to a printing or publishing establishment, “is in the nature of a generic entity designation which is incapable of serving a source-indicating function”); In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“’PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company”); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (“the element ‘INC.’ [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity”).

Accordingly, there is little benefit to including an entity designation in your trademark application.

Moreover, when you submit a specimen to the Patent and Trademark Office, the specimen should match the mark in the drawing of the application.  If you included an entity designation in your trademark application but don’t use the entity designation when you use your trademark to market your goods or services, then the specimen and drawing won’t match.  In the same vein, if you try to submit a specimen that includes the entity designation, the Examining Attorney might determine that your mark is being used solely as a trade name as explained in Section 1202.01 of the Trademark Manual of Examining Procedure and refuse registration:

The name of a business or company is a trade name. The Trademark Act distinguishes trade names from trademarks 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 Equipment 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 (TTAB 1994) (DIAMOND HILL FARMS, as used on containers for goods, found to be 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 Unclaimed Salvage & Freight Co., Inc., 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 Engineering & 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. Therefore, no refusal on that ground will be issued in an intent-to-use application until the applicant has submitted specimen(s) of use in conjunction with either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d).

In short, the best practice is to avoid including the entity designation associated with your formal business name in your trademark application.

Leave a Reply

Your email address will not be published. Required fields are marked *