Rally Round the Trade Name

Rally Round the Trade Name

Lenora Gumbs
Professor Mary Myers-Nelson Law, Ethics, and Corporate Governance- Leg 500 March 10, 2012

Rally Round the Trade Name Abstract This paper describes Intellectual Property and Trade Names or Trademarks. It also describes the laws that are associated with Trademarks. It describes who holds the exclusive rights to Rally and the remedies that Herman has if someone infringes upon his trade name. This paper

describes the events of the video clip, Intellectual Property: Trade Name, and what right Herman has as an original user of the name Rally for a business in his area.

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1. Explain whether or not the fact that Gabbys surname is Rally gives her the right to use it any way she wishes. No the fact that Gabbys surname is Rally does not give her the right to use the name any way that she wishes. Rally Motor Cars is the dealerships trademark and even though that is Gabbys last name the name Rally is already in use by Herman and he has exclusive rights to use the name. According to the United States Patent and Trademark Office the definition of trademark is: A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods or services. (Trademarks Home, n.d.) Rally Motor Cars has been in existence for forty years and has exclusive rights to the name Rally for business. The name Rally identifies customers with his dealership thus it is the trademark or Trade name of the business. Even though that is Gabbys surname she cannot use it for her business name if it will infringe on the already established trade name. Gabby has no rights to use the name for the pizza business because the name is already associated with another business that was established prior to hers. 2. Explain whether or not it matters that Rally is associated with pizza. No it does not matter that Rally is associated with pizza. Herman has the exclusive rights to the name Rally and thus no one else can use the name without the permission of Herman. According to Bit law there are 8 things factors that are likely to cause confusion and cause infringement on a Trademark. One of the factors is, the strength of the plaintiffs mark (Tysver, n.d.). Rally Motor Cars has been open for forty years and the company spends more than three hundred

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thousand dollars a year advertising the company (Osborn, n.d.). Another factor is, there is any evidence of actual confusion by consumers (Tysver, n.d.). When the video, Intellectual Property: Trade Name, first begins Tony answers the phone and it is a customer who is trying to order pizza (Osborn, n.d.). The car salespeople are becoming frustrated because they are getting several calls from customers who are confusing Rally Motor Cars with Rallys Pizza (Osborn, n.d.). If there was no confusion of the companies there may not have been as much of a problem but since the customers are confusing the two businesses then Gabby would have to change the name in order to end the confusion. 3. Explain how important the fact is that Herman started to use the name Rally first in that particular geographical area. This is extremely important because Herman would not have the exclusive rights to the Rally name had he not used the name first in the particular geographical area. Common law trademark rights are limited to the geographic area in which the mark is used but if the trademark is registered with the US patent and trademark office then it is protected throughout the United States (Tysver, n.d.). Thus Herman has exclusive rights to the name in his geographical area is because he has the evidence that the name of the company has been used as the name of the dealership for over 40 years. His business name has been registered with the state much longer than the pizza parlor because it recently opened thus he would be the first to have rights to the name. He is in a position to sue any company in his market area that uses his trade name. Because of this Gabby would not be able to use the same name Rally for her business because it is an already established name that has been used in the same geographical area. Not only that but the name of the pizza parlor is creating confusion with the already established Rally Motor Cars because people are confusing the name and may even think that the two have some type of

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relationship. People who have had a great experience at Rally Motor Cars may choose to go to Rally Pizza Parlor for pizza thinking they are owned by the same person. If they have a bad experience at the pizza parlor they may automatically associate that experience with the dealership and inadvertently destroy the rapport they had for the dealership. 4. Explain what rights you have in your trade name. The rights you have in your trade name depend on whether the protection is on a state/local law or you have a trade name that has been registered with the US Patent and Trademark Office. According to the US Patent and Trademark Office (USPTO), a trademark does not have to be registered in order to establish rights to the name. The company just has to use the name in commerce. Like previously stated, the name is only protected based on what the state statutes provide when the company is not registered with the USPTO. When the company registers the trademark, these are the benefits that are provided:

Public notice of your claim of ownership of the mark; A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;

The ability to bring an action concerning the mark in federal court; The use of the U.S. registration as a basis to obtain registration in foreign countries; The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

The right to use the federal registration symbol and Listing in the United States Patent and Trademark Offices online databases. (Frequently Asked Questions about Trademarks, n.d.)

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If a company wants all the rights they deserve to protect their tradename then they should get the tradename registered. Under the common law they are still able to protect the name they have established for their business. If a company uses their name and it is the same type of business or the business that creates confusion, for example Gabbys pizza parlor, then the company has the right to take legal action for infringement of their tradename for their business (Tysver, n.d. ). 5. Explain what remedies you have if someone else infringes upon your trade name. These remedies also depend on whether or not the company is registered with the USPTO. According to Bit Law, the most common form of relief granted for trademark infringement is an injunction against further infringement. It also states that monetary damages are available under the Lanham act but are rarely awarded. When a company is registered with the USPTO the company has a higher level of protection. The protection is as follows:

The ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances;

The ability to recover attorneys fees in infringement actions; The incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;

The right to use the symbol in connection with the mark, which may deter potential infringers;

Increased ease of discovery by those doing trademark searches, which helps to prevent the adoption of confusingly similar marks by third parties;

The right to sue for infringement in federal courts; and

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The ability to have the customs service block the importation of goods bearing an infringing mark. (Tysver, n.d.)

When reviewing these facts the company should always have their tradename registered witht the state therefore they can prove they have the exclusive rights and can recover damages and attorney fees if they do have to go to court for infringement.

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Works Cited
Frequently Asked Questions about Trademarks. (n.d. ). Retrieved March 10, 2012, from United State Patent and Trademark Office: http://www.uspto.gov/faq/trademarks.jsp#_Toc275426680 Osborn, J. (Writer). (n.d.). Intellectual Property: Trade Name [Motion Picture]. Trademarks Home. (n.d.). Retrieved March 8, 2012, from The United States Patent and Trademark Office: http://www.uspto.gov/trademarks/index.jsp Tysver, D. (n.d. ). Welcome to Bil Law. Retrieved March 10, 2012, from Federal Trademark Application and Regulations: http://www.bitlaw.com/trademark/federal.html Tysver, D. (n.d.). Welcome to Bit Law. Retrieved March 8, 2012, from Trademark Infringement: http://www.bitlaw.com/trademark/infringe.html#elements Tysver, D. (n.d.). Welcome to Bit Law. Retrieved March 10, 2012, from Common Law Trademark Rights: http://www.bitlaw.com/trademark/common.html