Vol. 8, No. 1, Pg. 24. My Name, My Heritage, My Trademark Infringement Suit.

• Author: By Michael A. Mann and John C. McElwaine

South Carolina Lawyer

1996.

Vol. 8, No. 1, Pg. 24.

My Name, My Heritage, My Trademark Infringement Suit

24My Name, My Heritage, My Trademark Infringement SuitBy Michael A. Mann and John C. McElwaineThe trade name, trademarks and service marks of a business can become its most valuable asset. Tiffanys and Dean Witter can charge more for their products and services than can lesser known businesses because their reputation adds value to what they sell. Similarly, the prestige of trademarks such as Rolex and Rolls Royce enables the makers of these products to charge premium prices.

A primary goal of a business, then, should be to establish a reputation for itself and its products and services so that it does not have to compete solely on price. For some business owners, using their own family names may seem entirely consistent with this goal: the owners are so committed to quality and craftsmanship that they are willing to stake their own family's reputation, along with the reputation of their

25business and their products or services. Unfortunately, one's own name may be a poor choice. Also, by making that selection, the business owner may be walking into a trademark infringement lawsuit or a suit for unfair trade practices.

In general, a business can incorporate under any name that the Secretary of State can distinguish from other previously-selected, corporate names. The selection of a business's full corporate name is somewhat arbitrary, and its use is appropriate for many purely legal purposes. But a business also uses a trade name, that is, the name by which it is known on the street or to its customers. DuPont, for example, is the trade name of E.I. DuPont de Nemours & Company, Inc. Merrill Lynch is the trade name of Merrill Lynch & Company, Inc. The trade name, which is sometimes a conscious choice and sometimes selected by the public, should not be so similar to that of another business that, when used in connection with the business, it is likely to cause confusion, mistake or deception.

The same is true of the business's trademarks and service marks. Trademarks are the names of products sold by businesses; service marks are the names of services provided by businesses. The same word can serve all three functions. Exxon is a trademark for gasoline and a service mark for services provided at Exxon service stations. Businesses are essentially free to name themselves and their products and services anything they want, so long as their choice does not cause confusion, mistake or deception of the public as to the source of the products and services.

These...