When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.” But not all words qualify as trademarks. A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark. Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.
In 200 Kelsey Associates, LLC v. Delan Enterprises Inc. and One Step Up, Ltd. (Cancellation No. 92044571), the Trademark Trial and Appeal Board held that the continuous use of the “Jonathan Logan” trade name on Delan Enterprises' company's documents was not a “trademark use.” Delan was the owner of the JONATHAN LOGAN mark for use with women's dresses, pant suits, pants, shorts, culottes, blouses, jackets, vests, and coats. In 2006, Delan assigned the mark to One Step Up, Ltd.
200 Kelsey Associates filed an intent to use application to register JONATHAN LOGAN, but was denied by the examining attorney because of the outstanding Delan registrations. Kelsey then filed for cancellation of Delan's JONATHAN LOGAN mark for abandonment. To show that they had not abandoned use of the mark, One Step Up presented a newspaper advertisement, a form that identified Jonathan Logan as a vendor, a Jonathan Logan invoice that was sent to Burlington Coat Factory, a purchase order form, and computer printout of payment history by Jonathan Logan.
Based on this evidence, the Trademark Trial and Appeal Board held that the JONATHAN LOGAN mark had been abandoned. The evidence presented by One Step Up showed only that the trade name Jonathan Logan was still in use, not the mark. Since the submitted documents only showed the trade name in use, and because there was no other evidence of an intent to resume use of JONATHAN LOGAN as a mark, the Board granted 200 Kelsey's petition for cancellation.
The key distinction between a trademark use and a trade name use is that a trademark designates the origin of a particular good or service. A trade name simply serves as a referential shortcut to a business and isn't used on products or services to indicate their source. As the Board noted in this case,
In fact, Mr. Haigney testified that the documents he produced at his deposition did not necessarily show that his company purchased JONATHAN LOGAN branded clothing, only that the documents showed that the clothing came from the Jonathan Logan company.
[W]e note that there was no evidence on behalf of respondents regarding the practice of placing the JONATHAN LOGAN trademark on every item of clothing sold by the “Jonathan Logan” company. In other words, respondents are asking us to improperly infer that any clothing sold by the “Jonathan Logan” company featured a label displaying the JONATHAN LOGAN trademark.