Business owners often reach out to us with the goal of “protecting their business name.” When we hear this request, it’s always important to ensure that we’re speaking the same language. Corporate names, trade names, trademarks, and domain names all relate to different aspects of a business’ identity. Each can be viewed as a “business name,” but they’re all distinct and separate concepts. They aren’t particularly dependent on each other in the legal sense – other than the fact that business owners understandably want to synch them up.
Our own firm recently underwent a rebrand, so we’ll refer to our own experiences to illustrate these concepts.
Corporate Names
A corporate name is your company’s legal name – it’s the official title of the business entity registered with a state or country’s government authority. If “companies are people too,” then a corporate name on a charter document is akin to an individual’s full legal name on their birth certificate. When you file your company’s formation documents, you’re establishing your corporate name.
This is a unique identifier for your entity, and it must be sufficiently different from other corporate names registered in your jurisdiction. The flip side of that is that it’s possible to have the exact same corporate name in two different jurisdictions.
Within our own experience, our firm was initially formed as an Illinois limited liability partnership called Zlatkin Wong LLP. After some internal changes, it made sense to convert the entity into a limited liability company. The corporate name of our firm is now ZCE LLC. It’s still formed in Illinois, but it’s a limited liability company.
When we were considering restructuring, we thought that “Zlatkin Cann Entertainment LLC” would be way too long to put on all formal paperwork. That’s why we decided to have a corporate name that used ZCE as an acronym. We needed to ensure that nothing identical to “ZCE” was currently in existence in Illinois. We didn’t have to determine whether there were any other entities with the same corporate name formed in any other states. As long as there wasn’t an entity with an identical name in Illinois, and as long as our entity designation was accurate for the entity type (i.e., “LLC” for a limited liability company), we were good to go.
Of course, with developments in the quality of internet searches, it’s relatively easy to simply plug a corporate name into your search-engine-of-choice and see what records potentially pop up. (Note that most results relating to corporate names that are returned via commercial search engines are not the official government records. They’re usually derived from for-profit data-mining services. Once you identify through these third-party webpages that an entity exists somewhere, we highly recommend visiting the actual state agency’s website and verifying the results. Even if the search engine results are legitimate, they may be outdated.)
It’s also important to understand what corporate names DON’T do. First, they don’t necessarily say anything about what the entity actually does. You can have two businesses with an identical corporate name in two separate jurisdictions participating in completely different or completely identical lines of work. Even within the same jurisdiction, you could have two companies with slightly varying corporate names doing whatever type of business they wish.
Second, corporate names don’t protect your branding in any way. Just like an individual’s full legal name, the corporate name will go on all formal paperwork – contracts, tax documents, bank accounts, and the like. But the ability to register a corporate name successfully in a particular jurisdiction doesn’t mean that you have the green light to use the name in outward-facing branding materials.
You’ll note that we don’t tend to use “ZCE LLC” in most of our marketing collateral. Sometimes we reference our company as “ZCE” for simplicity, but in most instances, our brand is “Zlatkin Cann Entertainment.” That’s both our trade name and our trademark – concepts addressed below.
Trade Names (AKA Assumed Names or DBAs)
Trade names, often referred to as assumed names or “DBA” (doing business as), are monikers under which a business operates that are different from the legal corporate name. This allows a company to conduct business using a name that’s perhaps more marketable or resonant with its audience.
As noted above, even though our company is formally registered as “ZCE LLC,” we tend to go by “Zlatkin Cann Entertainment” for most business purposes. Sometimes people (including us) shorten it to “Zlatkin Cann.” Other times, third parties still refer to our firm by its old name, “Zlatkin Wong.” We decided that the appropriate thing to do would be to register each of these alternatives as a formal assumed name (which is the term of art used in Illinois to refer to trade names).
While trade names don’t actually provide the all-clear for marketing purposes, registering them can be helpful for several business reasons. For example, customers may issue payments to the assumed name. When a client makes a check payable to “Zlatkin Cann Entertainment” or “Zlatkin Cann” or “Zlatkin Wong,” the bank needs to have some way of tying those alternative names to the accounts belonging to ZCE LLC. Banks tend to require a formal record of that connection, and so maintaining an assumed name registration (or three) can help solve that issue.
In a similar vein, having the assumed names helps tie multiple names to the same entity. Because we’ve registered the three assumed names with the Illinois Secretary of State, someone seeking to verify the proper existence of Zlatkin Cann Entertainment (and seeing that our firm is based in Illinois) can search Illinois corporate records and determine that Zlatkin Cann Entertainment is the same entity as ZCE LLC.
While Zlatkin Cann Entertainment is our “flagship DBA,” we registered “Zlatkin Cann” because that was the name that we found some of our collaborators putting on contracts. Meanwhile, just because we restructured our business in a manner that resulted in a name change didn’t mean that all of our prior operations ground to a halt. The name “Zlatkin Wong” was connected to a lot of our internal and outward-facing dealings. It was important for people that thought they were dealing with Zlatkin Wong LLP to be able to connect the two companies together. (Notably, while some states maintain a single corporate record even after a company converts from one type of entity to another, our conversion from an LLP to an LLC resulted in the creation of an entirely separate corporate record in Illinois. That made it all the more important for us to ensure that the trade name “Zlatkin Wong” was tied to the corporate records of ZCE LLC.)
Trade names are also particularly useful for sole proprietors. An individual who hasn’t formally registered a separate business entity may still wish to ensure that their chosen business name can be connected to them. A formal registration of the DBA with a local municipality, such as a county, can help them tie the assumed name to themselves. (At the same time, there are benefits to formally registering a separate entity, and we certainly recommend that sole proprietors consider doing so sooner than later.)
Even though there’s a distinct connection between a trade name and the outward-facing branding of a business, it’s still important to understand that registering a DBA does nothing to secure exclusive rights to a particular brand for marketing purposes. For those that care about brand protection, learning about trademark law is a must.
Trademarks (and Service Marks)
From a business owner’s perspective, a trademark is all about brand protection. It’s a sign, design, or expression that serves as a source identifier and distinguishes your products or services from those of others. Trademarks can be names, logos, slogans, and even sounds or smells. (Though source identifiers for services are technically “service marks” rather than trademarks, being pedantic never endeared anyone to anyone, so we’ll refer to trademarks or marks throughout, regardless of whether we’re talking about goods or services.)
When thinking about trademarks, it’s important to internalize that their primary legal purpose is to protect consumers. That’s why the standard for determining whether someone’s trademark rights have been violated is whether there’s a likelihood of consumer confusion. In other words, how likely is an average consumer of the types of goods or services in question to be confused about the source of the goods or services offered by two different providers?
There’s a multitude of factors that courts use to determine whether a likelihood of confusion may exist, but for simplicity, it really helps to think about just two of them. First, how similar are the marks? Second, how similar are the goods or services being offered with the use of the marks? The more similar the marks, the more different the offerings have to be, and vice versa.
This means a couple of things. You can have two businesses using identical trademarks, but if the goods or services being offered are sufficiently different, then there’s no likelihood of confusion. At the same time, if the offerings are similar, then two marks don’t have to be identical to create potential confusion for consumers.
Additionally, because consumer protection is the primary goal of trademark law, registrations aren’t technically required in order to get at least some protection. If a business can prove that it has truly penetrated a particular market with the use of a trademark, then it can argue that consumers within that market would be harmed if another merchant was using a similar mark for similar offerings. These types of common law rights, however, are relatively weak. Registering trademarks – preferably on the federal level – significantly upgrades a business owner’s ability to claim exclusive rights in a particular brand.
It’s important to emphasize that trademarks are not limited to just the name of a business. For our firm, yes, “Zlatkin Cann Entertainment” and “Zlatkin Cann” are our primary service marks, but those aren’t the sole identifiers for our firm’s services. For example, we recently obtained a federal registration for the slogan “Practical Legal for the Creative You.” Similarly, we have previously obtained registrations for our former business name “Zlatkin Wong” (which still serves as a source identifier in some instances, as discussed above), as well as our logo.
Therefore, while a business entity certainly can be formed without considering trademarks, if a business owner is insistent on having the branding match the legal name, then it’s important to assess whether there are other providers of similar offerings who are already using a trademark that’s too similar to the contemplated corporate name.
Furthermore, as the digital revolution has taken over, the ability to rely on common law rights has diminished significantly. Whereas in the 20th century it was perfectly feasible for two businesses operating in different parts of the United States using the same branding to be blissfully unaware of each other, now companies find themselves fighting over the same digital real estate. Federal trademark registrations can go a long way toward getting third-party online platforms to respect your rights in a particular brand.
Domain Names
Domain names are your address on the internet – a unique identifier that allows customers to find your business online. It’s the web equivalent of your store’s location. A domain is what people type into a browser to visit your website.
Securing a domain name is an integral part of establishing an online presence, but it doesn’t mean you have trademark rights to that name, nor does it necessarily reflect your corporate or trade name. Domain names are registered through domain registrars accredited by the Internet Corporation for Assigned Names and Numbers (ICANN).
Most of the time, slight variations in a domain name will allow different parties to secure rights to it. This can create problems for a business, as there’s no control over potential consumer confusion in the absence of trademark rights. At the same time, trying to register any and every version and alternative of a name is impossible, as well as pricy. It’s necessary to think strategically.
When we first formed our firm, we went the somewhat simple route of registering “zlatkinwong.com” as the primary domain. That reflected the company’s corporate name at the time, but you can imagine how “fun” it was trying to dictate email addresses over the phone. When planning the rebrand, we resolved to have a much more manageable domain name.
While the .com version of ZCE was predictably taken already, the advent of new top-level domains such as .law made it possible for us to have a much shorter domain name. Therefore, our “flagship domain” – not a technical term – is now zce.law. Of course, it still made business sense to maintain our zlatkinwong.com domain, and to register additional domains like zcelaw.com, zlatkincannentertainment.com, zlatkincann.com, and several others. All of these domains redirect to our zce.law website. It’s possible, of course, that others may try to register close alternatives, but we’re making an informed decision that we think meets our needs.
While domain names are arguably the “least legalese” of the various concepts discussed here, they’re often the primary driver for a company’s branding decisions.
Synchronizing Business Identity
When it comes to creating a cohesive brand image, the synchronization of a corporate name, trade names, trademarks, and domain names is more than just a legal safeguard – it’s a strategic business move. By aligning these elements, you’re not only confirming your professional presence in both physical and digital spaces, but also protecting the integrity of your brand across various platforms and jurisdictions. The order of operations, however, isn’t always cut-and-dry.
When we first launched our firm, we didn’t have much time to spend on determining the overall branding. We were fortunate enough to have prospective clients immediately, and we had to start serving them as quickly as possible. For that, we needed email inboxes. Sure, we could have operated through a generic email provider for a while, but that would have likely led to some confusion when we switched subsequently. We needed a domain name in order to get our business rolling.
The domain name, of course, needed to reflect the company’s intended branding. With more time, it’s possible that we would have arrived at something different, but with the time constraints, imagination was too much of a luxury. The firm’s founding partners Ilya Zlatkin and Jennifer Wong defaulted to the time-honored lawyer tradition of using their last names. Somewhat boring, but effective enough. The combination of last names was unique enough to secure a domain name and establish inboxes.
Because the firm was launched in the fall of 2019, we didn’t want to have to deal with tax returns for a separate business entity for just a small part of the year, so we operated through different entities through the end of 2019 and formed the LLP at the start of 2020. Because the brand matched the corporate name, we didn’t really have to worry about any trade names. When we felt appropriate, we submitted various federal trademark applications, including for the word mark ZLATKIN WONG.
When it was time to rebrand, we knew that corporate restructuring would have to take place, but we weren’t experiencing the same pressures. We thought about potentially renaming the firm into something that didn’t simply use the partners’ names, but we also realized that the prior firm name had developed some brand equity. We wanted to salvage whatever goodwill we could.
The firm may have simply rebranded into “Zlatkin Cann,” but we were intent on ensuring that we didn’t just replace one lengthy domain name with another. The .law top-level domain that would have simply contained the letters ZC was unavailable, and it wasn’t worth it for us to try to buy it. Instead, because our name change coincided with our intent to refocus specifically on entertainment law, it made sense to add Entertainment to the name. Fortunately, the ZCE.LAW domain was available!
So, having committed to the ZCE.LAW domain and to using “Zlatkin Cann Entertainment” as the primary brand, it was time to restructure formally. As noted above, constantly having to write out the full name on all legal documentation would have become annoying, so we were ecstatic to find that “ZCE LLC” was available in Illinois. Once the LLC came into existence, we promptly proceeded to register all the relevant trade names, as discussed above.
With respect to trademark protection, because we had prior registrations from the Zlatkin Wong days, we felt comfortable that we were sufficiently protected so as not to rush registering the flagship trademarks. At the same time, with the determination that PRACTICAL LEGAL FOR THE CREATIVE YOU was a fitting slogan for our services going forward, we promptly moved to submit an application to register the phrase federally.
Finding harmony between your legal identifiers and branding elements isn’t just a question of legalities. Marketing concerns are unavoidable, and there are many folks out there much more knowledgeable than we are with respect to those. But to the extent that you need insight on the applicable laws relating to business names, consider reaching out. We’d like to think that we can contribute not just as lawyers, but as business owners as well.