15.4 DEFINITION—TRADE NAME/COMMERCIAL NAME

(15 U.S.C. § 1127)

A [trade name] [commercial name] is any word or words, a symbol, or combination of words and symbol, used by a person to identify that person's [business] [vocation] [or] [occupation] and to distinguish it from the business of others. A [trade name] [commercial name] symbolizes the reputation of a person's [business] [vocation] [or] [occupation] as a whole. [By comparison, a trademark identifies a person's goods.]

Any person who uses the [trade name] [commercial name] of another may be liable for damages.

[If a person owns a trade name, then that person has the exclusive right to use the name or to control the use of confusingly similar variations of the name by others in the market.]

Comment

Use of a term as a trade name and trademark is properly analyzed separately for infringement when the term serves as both identification for an organization (trade name) and as an identification of the source of a product (trademark). See Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 903, 908-09 (9th Cir.1995)). The right to use a term as a trade name is not necessarily coterminous with the right to use that term as a trademark for goods or services. See Stephen W. Boney Inc. v. Boney Services, Inc., 127 F.3d 821, 828-29 (9th Cir.1997). Accordingly, each should be analyzed and instructed separately.

"Trade names symbolize the reputation of a business as a whole. In contrast, trademarks and service marks are designed to identify and distinguish a company's goods and services…As a practical matter, courts are rarely called upon to distinguish between trade names, trademarks and service marks. Trade names often function as trademarks or service marks as well . . . Perhaps because of this functional overlap, the same broad standards of protection apply to trademarks and trade names." Accuride Int'l v. Accuride Corp., 871 F.2d 1531, 1534-35 (9th Cir.1989).