How to Trademark a Business Name

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How to Trademark a Business Name

How to Trademark a Business Name is part of our How to Trademark series. 

 There are some misconceptions when it comes to trademarking a business name. It’s not enough to register your company name in your state since that provides no trademark rights whatsoever.  To garner full trademark protection, you must follow the process set forth by the USPTO.  Also, you generally cannot copyright or patent a business name.  Instead, business names are protected by trademark law.

How to Get a Trademark for a Business Name

To trademark a business name, you’ll need to provide the following information:

  • The trademark owner’s name and address.
  • Applicant’s entity type (corporation or individual) and nationality.
  • Sufficient use in commerce or intent to use.
  • Detailed description of trademark and products or services at issue.
  • A specimen of use showing use in commerce.
  • The trademark’s date of first use.

If your company sells items that fall under different trademark classes, you’ll need to pay additional fees for each class you’re filing under. Keep in mind that that proper names, generic phrases and descriptive terms typically cannot receive trademark registration.

Trademark Search

Performing a trademark search prior to registration is a very important first step to securing trademark rights. Failing to do so could result in attempting to register a trademark that would create a likelihood of confusion with preexisting trademarks. Even worse, you could end up in court in trademark litigation. More than 4,000 trademark infringement cases are filed yearly.

You can perform a trademark search on the USPTO website here.

Trademark Classes

The USPTO uses its trademark classification system to identify and distinguish trademarks within different industries. These classes can range from jewelry to processed foods. Your application must list at least one trademark class to be accepted. If approved, your registration will only protect the trademark for goods and services similar to those you’ve applied for.

This means a trademark used in relation to food may still be registered by someone else under the entertainment services. This makes it important to list every trademark class your trademark will be used for. There are 45 different classes to choose from, and some of them are very similar. Class 30, for instance, is ‘staple foods.’ This could be confused for Class 31, ‘natural agricultural products.’

The Trademark ID Manual lists all acceptable identifications.  Understanding trademark classes is an essential aspect of how to trademark a business name. Failing to get this right could result in your brand going unprotected when it comes to certain products or services.

Types of Trademarks

Understanding the types of trademarks available can save both time and money. This will help you recognize what can and cannot be registered. You’ll also be able to judge just how protected your trademark will actually be. Stronger trademarks provide an advantage if you’re ever facing trademark litigation. The less generic your trademark is, the more difficult it is for others to claim that infringement was accidental.   Trademarks range from generic and descriptive on the weaker side to suggestive, arbitrary and fanciful on the strong side.

Generic Trademarks

Generic terms describe ingredients, characteristics or other qualities of your product.  Without adding additional detail, a generic trademark typically cannot be registered with the USPTO. If your company is named “The Auto Shop,” registering such a trademark would unfairly hinder every other auto shop in America from being able to use that phrase.

Descriptive Trademarks

Descriptive marks enjoy slightly more protection than generic trademarks. To qualify, however, it must have earned secondary meaning in the minds of consumers. This requires you showing proof that consumers equate a certain trademark directly to your business.

Suggestive Trademarks

The USPTO will register suggestive trademarks without the need for secondary meaning. A suggestive trademark is related to the goods or services at issue but requires some mental pause.  Although the trademark ‘Greyhound’ may have nothing to do with buses, for instance, it suggests that the transportation service is fast.

Arbitrary Trademarks

Phrases and terms with well-known meanings may still be registered if they qualify as an arbitrary trademark. This means the name of your business is unrelated to the actual words used. A company that sells apples, for instance, could never trademark the word ‘apple.’ A computer company, however, can do so since it’s arbitrary to the product offered.

Fanciful Trademarks

A fanciful trademark is a completely made up work to function as a trademark.  These types of trademarks are the strongest and offer the highest level of trademark protection. Examples include Nike, KODAK and Google.

Trade Dress

Understanding trade dress isn’t always necessary when learning how to trademark a business name. Decorative or packaging elements could qualify for trade dress protection. Everyone recognizes, for instance, the distinctive shape of a classic Coca-Cola bottle. This is why it qualifies for intellectual property protection.

Service Marks

If you provide services rather than sell products, your business can receive protection under a service mark. This simply distinguishes goods from services but still falls under the umbrella of a trademark. If your business name is Jaguar Lawn Care Services, you are likely using a service mark.

Trademarks vs Copyrights

Whereas trademarks are words or designs that designate the source of goods or services, copyright registration grants exclusive rights over original works of authorship. These can include dramatic, literary, artistic, musical and other forms of authorship. Even computer code can qualify for copyright protection.

Trademarks vs Patents

Patent protection is granted to the creators of novel, useful and non-obvious inventions. It allows the owner to exclude others from using, making, importing or selling the item. Unlike trademark protection, though, patent registration only lasts for a limited time whereas trademark rights can go on forever.

Common Law Trademarks

Federal trademark registration grants an array of protections over your intellectual property. Thanks to common law trademark statutes, however, it’s not mandatory that you register your trademark. Some protections are still afforded for trademarks being used in commerce without registration. Unfortunately, the rights are much more limited.

Trademark Symbol

Only after your registration issues can you use the “R” with a circle around it (®) trademark symbol. Until that point, you can use the TM (trademark) or SM (service mark) superscript symbols to denote trademark protection.

Dead Trademark

There are a number of issues that can lead to a dead trademark. This simply means the USPTO no longer recognizes the trademark as valid, so anyone else can submit an application and potentially take ownership over the name.  Trademark will be considered dead and abandoned if a timely response is not filed with the trademark office for things like Office Actions, Notices of Allowance, and for renewals.

How to File a Trademark for a Business Name

Once you have performed a trademark search, ensured your trademark is registerable and gathered all necessary information, visiting the USPTO website is the first step in how to file a trademark for a business name. All of the necessary forms you’ll need are provided on the USPTO website.

If approved for publication by a USPTO trademark attorney, your trademark will be published in the Official Gazette for an opposition period. If no trademark opposition or extension request is filed, you’ll be granted a registration.

Trademark Cost

Trademark costs come in three tiers during the registration process. These range from $225 to $400 dependent upon the amount of information you include.  If you need to file a Statement of Use (SOU) prior to receiving your registration, the current fee of $100 per class will apply.  The fee for a request for extension is $125 per class.  Our professional fee for a trademark search is $300, and our professional fee to prepare and file the application is $575 which includes our time for basic follow up through registration.  For more information, see how much does it cost to trademark a business name.

Trademark Use in Commerce

To receive protection, you must show qualified trademark use in commerce. Proof of actual use for products can include packaging, labels and the product itself. For service marks, typically the best specimen of use is a webpage showing the services being offered.

If you have yet to use your trademark in commerce, you can still file an application. This is known as an intent to use trademark, and there are additional requirements to eventually receive protection.

Intent to Use Trademark

After the Trademark Law Revision Act of 1988 was passed, the USPTO started accepting trademark applications based on an intent to use. As long as you have a bona fide intent to use a trademark – rather than just reserving it – you can file your application prior to use in commerce. A sworn statement of intent to use with your application is required.

Trademark can be placed in the Official Gazette prior to use, but a trademark registration will not be granted until proof of use is provided. This is done through the submission of a Statement of Use. If an examining attorney decides that sufficient use in commerce has occurred, your Intent to Use Trademark will be registered.

Statement of Use

A Statement of Use provides the proof necessary to finalize your trademark application. After receiving a Notice of Allowance, you’ll have six months to provide this documentation before your trademark is considered abandoned. You can also file an extension request.  You are allowed to file for them up to five times.

How Long Does It Take to Trademark a Business Name?

It takes about four months before your business name trademark application is even assigned to an examining attorney. If the attorney has no objections, your application will publish in the Official Gazette.  This begins a 30-day opposition period during which third parties can oppose your application.

If no oppositions are raised during this period, you’ll typically receive your registration within three months. This means that it can take eight to nine months to trademark a business name if everything goes smoothly. If the examining attorney has objections, the process will be delayed until you settle them.  If a Notice of Opposition is filed, you’ll be given a response deadline and trial dates. The proceeding are conducted by the Trademark Trial and Appeal Board.  Each year there are about 6,000 trademark oppositions filed.

How to Trademark a Business Name and Logo

Generally we recommend that you treat your business name and logo as two distinctive trademarks. This means filing a trademark application for both. By far the most important trademark to file is the word only version.  Then, if you have a design that is very important and unlikely to chance, you should file a second trademark application to protect the design.

How to Trademark a Business Name in California

A U.S. trademark registration provides protection nationally. This includes California and every other state. While the rights are much more limited, you can also file a trademark application for a single state such as California.  More information can be found at the Secretary of State’s website. Similar to seeking federal registration, you can perform a trademark search in their database.

International Trademark

U.S. trademark registration doesn’t grant any overseas protection. It can serve, however, as a basis for filing in other countries. In 1973, America joined the Nice Agreement. This created standardization for international trademarks. While fewer than 90 countries have signed the Nice Agreement, it’s likely that most nations where you want to trademark your business name are parties of the treaty.  For international trademark protection we typically utilize the Madrid protocol whenever possible to file the application.

Trademark Renewal

To maintain your trademark registration, you must ensure that you submit trademark renewals at the appropriate intervals. The first must be submitted five to six years after you receive registration. This must be done again nine to ten years after registration. After this point, you must renew the trademark every 10 years after registration.

Contact Us

If you need assistance filing a trademark application for a business name, please contact us today.

 

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