“Imitation is the sincerest form of flattery.”
Here’s what we cover:
A trade name is the name under which a person or company conducts business. A trademark is a word, name, symbol or device, or any combination of these items, that is used by a person or company to identify its goods, and to distinguish them from goods made or sold by others. (If a mark is used to identify services, as opposed to goods, it is called a “service mark.” The same principles apply to both trademarks and service marks.)
Trade names and trademarks may be registered, for a small fee, with the Arizona Secretary of State. If a company does business in more than one state or is engaged in interstate commerce, it may also register its trade name and/or trademark with the U.S. Patent and Trademark Office. This article is primarily intended to assist persons and companies who may wish to register their trade names and/or trademarks under Arizona’s registration laws.
The form to apply for registration of a trade name is furnished by the Arizona Secretary of State. It requires the disclosure of certain information concerning the person applying for registration (the “applicant”), the name, title or designation to be registered, the nature of the applicant’s business, and the length of time the name has been used.
The Secretary of State will not file an application for registration of a trade name if it might mislead the public, or is not readily distinguishable from another registered trade name still in effect. The Secretary of State also will not file an application for registration of a trade name that is the same as, or “deceptively similar to,” an existing corporate name.
The Secretary of State maintains a list of all registered trade names in Arizona. A registered name search can be conducted online, by logging on to the Secretary of State’s Web site, www.azsos.gov, and clicking on Business Filings/Trade Names and Trademarks/Search for Registered Names.
If the Secretary of State accepts an application for registration of a trade name, he will issue a certificate of registration to the applicant. The trade name registration is effective for a period of five years. The registration may, however, be renewed for successive five-year periods.
The registration of a trade name will generally give to the owner of the name exclusive right to the use of the name. However, registration of a trade name does not affect the rights of a person or company that is already using the trade name in the operation of its business.
Any trade name may be assigned by the owner to another person. To assign a trade name, the owner must execute a written assignment and file it with the Secretary of State. The Secretary of State will then issue a new certificate of registration to the new owner for the remainder of the term of the registration.
Any person or company who adopts and uses a trademark in Arizona may file, with the Arizona Secretary of State, an application for registration of the trademark. The Secretary of State will provide the application form. The application must contain certain information about the applicant, the goods in connection with which the mark is used, and when the mark was first used. It must also include a statement that the applicant is the owner of the mark and that no other person has the right to use the mark in Arizona in the identical form, or in such near resemblance to the mark as might be calculated to deceive or to be mistaken for it. The application must be accompanied by a specimen or facsimile of the trademark in triplicate.
If the application is accepted for filing, the Secretary of State will issue to the applicant a certificate of registration. The certificate is legal proof of the registration of the trademark in any Arizona court.
Registration of the trademark is effective for a term of 10 years. The registration may be renewed for successive periods of 10 years, by the timely filing of renewal applications with the Secretary of State.
Any mark and its registration will be assignable with the goodwill of the business in which the mark is used or with that part of the goodwill of the business connected with the mark. To assign a trademark, the owner must execute a written assignment. The assignment should be filed within three months after its execution with the Arizona Secretary of State, who, in turn, will issue a new registration certificate for the remainder of the term.
The owner of a trademark that is famous in Arizona may obtain a court order prohibiting another person’s commercial use of the mark. To obtain a court order, the owner must show that the other person’s use of the trademark began after the mark became famous and causes dilution of the distinctive quality of the mark. In determining whether a trademark is distinctive and famous, a court may consider, among other things, whether the trademark is registered. If a person willfully intends to trade on the owner’s reputation or to cause dilution of a famous mark, then, in addition to prohibiting use of the mark, the owner may sue that person for money damages.
Trade names and trademarks are considered intellectual property, and should be protected to the greatest extent possible. Both proper use and registration of trade names and trademarks are important steps in this process.
Another critical consideration is to select a name/mark that can be protected against a third party’s use. Do not choose a merely descriptive name (e.g., apple for fruit), but rather choose a more fanciful term (e.g., apple for computers). This will help to insure that your mark is considered distinctive for the relevant goods or services in the marketplace.
If a trademark is used beyond the borders of Arizona (in interstate commerce, for instance), federal registration should be considered. State registration provides only limited territorial protection. A federal trademark registration provides the trademark owner with the right to expand its use of the trademark nationwide.
A trademark search is a prudent step to take before a new trademark is adopted to determine if you have the right to use the trademark. A nationwide clearance search should be conducted prior to the adoption of any mark to prevent disruption of your business that would result from being required to change your trademark by a prior user of a similar trademark. A court may order you to stop using a trademark if you adopt the trademark after another has used or registered the same trademark for a similar product or service. The test for trademark infringement is whether the use of the trademark would create a likelihood of confusion in the marketplace.
For additional information or forms, the reader may wish to visit the Arizona Secretary of State’s Web site, www.azsos.gov. Trademarks that are federally registered may be searched on the U.S. Patent and Trademark Office Web site, www.uspto.gov.
The above article is an excerpt from Arizona Laws 101: A Handbook for Non-Lawyers, 2nd Edition (Fenestra Books, 2012), by Donald A. Loose, republished with the author’s permission.
Disclaimer: Laws change constantly. Specific legal advice should be obtained regarding any legal matter. The information contained on this website does not constitute legal advice and no attorney-client relationship is created.
Donald A. Loose is an Arizona attorney, and the author of Arizona Laws 101: A Handbook for Non-Lawyers, and Estate Planning in Arizona: What You Need to Know. Mr. Loose is a regular guest on radio shows featuring local newsmaker interviews. He may be contacted at firstname.lastname@example.org.