Fall 2024 Newsletter
Margaret’s Notes
by: C. Margaret Tritch
Hopefully, summer has arrived for you, as it has for us. I am not talking about the Arizona heat, because of course that is here, in full force! My family has had the joyful, but busy graduation season with my eldest daughter, Elena, graduating from university and our youngest daughter, Elizabeth finishing middle school and excitedly getting ready for High School. Our office family also had Julio Romero graduating from Arizona State University. Personally, I am looking forward to the less hectic schedules of summer with no school and focusing on work, our clients, relaxed time with family, and projects around my house.
As we enter Fall and finish our summer vacations, it is a good time to focus on unfinished matters. In this newsletter, we share with you articles on protecting your business interests through Trademarks and/or Trade Names in both Arizona and California. Something many business owners think they should do, but then don’t do – sometimes to their detriment.
If you are only operating in one or two states, registering at the state level is a good option. The Secretary of State’s in Arizona and California are prompt in their review and approval. Registering your Trade Name and Trademark provides a level of protection to you as you build your brand and company awareness. Registering Trademarks on a federal level is something we refer out to one of our other partner law firms.
Otherwise, we have settled in nicely to our offices here in McCormick Ranch and are nearing our one-year anniversary! You may have met one of our summer interns from ASU over the past couple of months, and it was nice to have their energy and enthusiasm in the office. One of them, Brooke Malnard, is staying with us part-time through the Fall. You will hopefully get a chance to meet her and encourage her as she enters her senior year. So far, we have not put her off on her goal of attending law school, (fingers crossed).
Also, please note that I will be out of the country from October 3rd-14th. Our youngest daughter and I will be meeting up with Gennaro during her Fall Break in England. This is some much-needed family time for us, and I will try hard not to work and only be available to support Julio and the team back at the office.
Wishing you cooler temperatures and all the beauty of the Autumn!
What is a Trade Name?
By Julio Romero
A trade name allows a business to register its name for the public record. You can also register a doing business as (“DBA”) name as a trade name. A trade name is considered intellectual property. Businesses can still prove their first use of a trade name without registration, but it is easier to support your claim if you have registered your trade name and put the world on notice.
Arizona Trade Name Information:
In Arizona, a trade name can be filed with the Arizona Secretary of State for a $10 filing fee. The trade name in Arizona lasts for 5 years from the date of receipt. The form is now completed online, only, using the Arizona Business One Stop portal. It is touted as a secure network that requires no in-person interaction. The Arizona Secretary of State Office strongly suggests that applicants perform extensive, independent research before registering a trade name. This is because you cannot register an already registered name or a substantially similar name that is likely to create confusion. The Secretary of State’s database allows you to view all registered trade names.
We always search the database to see if the name is taken or something similar is taken and then discuss with our clients accommodations that might be best. A business wants its tradename to be approved but also not operate under a name that may create confusion, if similar to another’s tradename. This should be done ideally at the outset of a business or early on, as a business owner doesn’t want to invest money in building a brand that it can’t trade name or worse obtain a cease-and-desist letter, as it is a name already taken or too similar to another’s trade name.
Arizona Trade Name Registering:
A Trade Name requires:
- Name to be registered
- Owner Name
- Nature of the business
- Contact information
When filing, you are required to provide the owner’s name. This means an individual or a LLC, PLLC, or Corporation that is listed with the Arizona Corporation Commission (hereinafter “AZCC”). We search the AZCC’s public records to ensure all information is up to date and consistent with our filing. If AZCC’s records are different, the trade name application will be rejected.
Trade Name Misconceptions
- A misconception that many have is that a trade name will grant exclusive rights to a business name, but that is incorrect.
- Registering a trade name does not eliminate a company’s or person’s rights to use the name in their business operations generally.
- This also is not how you create a business. If you want to file a corporation or LLC, you must file with the Arizona Corporation Commission.
- If a trade name isn’t registered, it isn’t protected. Another can still show earlier usage, even if their trade name isn’t registered and be allowed to continue to use it. This is usually resolved in court or by a settlement agreement with attorney involvement.
Trade Name Processing
Once a trade name is filed, it will take 2-3 weeks for a review to be conducted and a decision to be made. If you wish to expedite your application, you may include an additional $25 fee, reducing the processing time to 2 to 3 days. Upon review, the email provided within the filing will receive the determination of being approved or denied. You will receive a denial letter indicating the reason for denial if denied. Once approved, you will receive a payment request requiring you to pay online. After payment is complete, you will receive an email with the application summary and the certificate of legal proof of the trade name registration for the State of Arizona.
Conclusion
Registering your trade name in the state(s) you do business in is both inexpensive and important intellectual property protection for your business. Investing money and time into a name that is already used in a similar industry is likely to create an expensive problem to resolve. When your business is small you may operate unnoticed for years. Then when you get to a substantial enough size that you are viewed as a competitor or someone who is hurting another’s trade name, they will issue a cease and desist letter and you must change your trade name or enter into a legal battle that may still result in you changing your name. Registering your trade name, ideally with the help of legal counsel, prevents such a problem and ensures you invest in a name you can protect and keep for years to come.
Resources:
https://azsos.gov/business/tntm
https://apps.azsos.gov/Business_Services/tnt_name_availability_instructions.htm
California Trademark & Service Mark
By Julio Romero
A Trademark is any word, name, symbol, device, or combination used to distinguish a good or product from those manufactured or sold by others.
A Service Mark is the same as a Trademark, except that it identifies and distinguishes the source of a service rather than a product.
General Filing Information
A California Trademark or Service Mark may be used to prevent others from using the same or a similar mark in the State. This does not guarantee exclusive ownership of the mark. A Trademark and Service Mark will be active for 5 years from the date it was filed.
California Secretary of State’s Office provides 3 options to apply:
- Online- Bizfile California Portal
- In-person at the Sacramento Office- 1500 11th Street Sacramento, California 95814
There is a $70.00 filing fee per classification code to file. The classification of goods and services are those adopted by the United States Patent and Trademark Office, and a single application may include multiple classifications of goods.
- The list of Classification Codes of goods and services can be found on the United States Patent and Trademark Office website.
General Processing Information
We always check the Secretary of States database to see if the name or description a client wants to trademark is taken or something similar is taken and then discuss with our clients’ accommodations that might be best. An application has nine sections that must be completed.
Some sections within the application are a written description of the logo or image, the date of first use, a design code section (refer to the Design Search Code Manual developed by the United States Patent and Trademark Office), an identification statement, the use of the mark section and lastly, choosing a Classification Code.
Once the application is complete, you will submit and pay the filing fee. Processing will take around four to six weeks to receive a determination. According to the Secretary of State’s website:
- Applications received online through our website, will be labeled received at the actual time and date received.
- Applications received in person over the counter in Sacramento will be labeled received at the actual time and date received.
- Applications received by mail will be labeled received at 5:00 p.m. on the date received.
To check the status, you can use their submission tool. Once your filing is approved, we recommend placing the symbol “TM” next to a Trademark or “SM” next to a Service Mark.
Conclusion
Registering your trademark in the state(s) you do business is both inexpensive and important intellectual property protection for your business. Investing money and time into a mark or logo that you use to brand your company is a critical component of any business. A trademark or logo that is already in use is likely to create an expensive problem to resolve. If another business views your business as a competitor or someone who is hurting their trademark, they will issue a cease and desist letter. You will then need to change your trademark or logo and your company’s branding; or enter into legal negotiations that may still result in you changing your trademark and branding. Registering your trademark, ideally with the help of legal counsel, prevents such a problem and ensures you invest in a trademark and brand you can protect.
References:
