How to Trademark a Company Name

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How to Trademark a Company Name

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

A company name that distinguishes the company’s products or services from others may qualify for federal trademark protection under the Lanham (Trademark) Act of 1946, 15 U.S.C. §§ 1051 et seq.  Registering a company name with the United States Patent and Trademark Office (“USPTO”) affords businesses important legal protections against trademark infringement.  Not every company name, however, is protectable. The distinctive nature of your company’s name in relation to the product or service offered dictates its trademarkability and the availability of legal protection.

How to Register a Trademark for a Company Name

Conducting a Trademark Search

Before investing significant funds in trademark development, you should have a trademark lawyer conduct a trademark search for related trademarks through the USPTO database.

Every registered trademark is coded and searchable based on its primary characteristics and registered class, including trademarks consisting of sounds, pictures, and designs. There are 45 trademark classes including 34 classes of goods and 11 classes of services, and you can search both the active and dead trademark database for similar trademarks. Dead trademarks are considered abandoned, and you may still register a new trademark if it’s similar to a dead trademark. Be aware that, if another company is using the trademark without a live registration they will still have rights.

Conducing a trademark search is essential to ensure your trademark is distinctive enough to merit registration through the USPTO. The trademark, however, need only be distinctive within its intended class. After consulting with an expert, you may register a trademark if there is no anticipated marketplace crossover or likelihood of consumer confusion between the brands.

Selecting a Filing Basis

When filing your trademark application, you must also select a filing basis:

  1. Actual use in commerce – Current use of your company name to identify an active business.
  2. Intent to use in commerce – A good faith intent to use the trademark to identify your company in the near future. When filing on this basis you should have some written documentation showing the intent such as a business plan.
  3. Foreign Priority – An application based on a recent foreign application.
  4. General Foreign Registration – For companies with active trademarks outside of the United States preparing to do business in the United States
  5. Madrid Protocol Applications – A reciprocity-based system that simplifies the multi-jurisdictional trademark application process.

Approximately 45% of applications are “intent to use” applications, 40% are “actual use” applications, 9% are Madrid Protocol applications, and 6% are additional specialized types of international applications.  See the USPTO website.

Types of Trademarks

Article 1, Section 8 of the United States Constitution protects the right of inventors and artists to benefit from their unique creativity.  Though typically associated with being the origin of copyright and patent protection, federal trademark law is also partly derived from this clause. A company name can fall into one of five categories of distinctiveness:

  • Fanciful: A company name invented to function as a trademark without real meaning outside that context. Pepsi®, Kodak®, and Exxon® are examples of fanciful company names.
  • Arbitrary: A company name with a common meaning that isn’t associated with the company’s products or services. Apple® is an example of an arbitrary company name.
  • Suggestive: Suggestive names creatively “suggest” something about the nature of the company’s products or services. Jaguar® suggests a fast vehicle, and Amazon® suggests a “jungle” of products.
  • Descriptive: Descriptive names are entitled to lesser or no trademark protection since they describe a product or service. For example, “Super Fresh Flowers” and “New York Pizza” are names that would have difficulty acquiring trademark protection.
  • Generic: Anything that doesn’t fall into the above categories is probably generic, i.e., “Mexican Restaurant,” “Thrift Shop,” or “Clothing Store.” These are generic names that cannot achieve trademark protection.

Company names considered fanciful, arbitrary, or suggestive are the strongest trademarks, while descriptive trademarks are those most likely to run into trademark infringement issues.

Trademark vs. Copyright

There are three primary categories of IP in the United States: Trademarks, Patents, and Copyrights. While trademark and copyright rights may arise without registration, patents must be registered by the USPTO.

Trademarks are words, phrases, sounds, symbols, and/or designs that identify and distinguish a company and its products or services. A company name is only trademarkable if (1) it’s currently being (or soon to be) used to identify an active business engaged in commerce and (2) is distinctive enough to be protectable. Examples of trademarked company names include:

  • Amazon®
  • Apple®
  • Google®
  • AT&T®
  • Target®

While these company names often appear in distinctive colors and fonts or as an individually trademarkable logo, some company names are distinctive enough to register without these additions.

Individual works of artistic expression, including the design portion of a business logo, can be protected by copyright law. The United States Copyright Office defines a “copyright” as the form of legal protection afforded to “original works of authorship,” which includes most forms of artistic expression:

  • Designs
  • Websites
  • Text, but not short phrases

Copyright protections arise automatically when the copyrighted property is placed in a tangible medium. The copyrighted work doesn’t need to be “used in commerce” like a trademark. Copyright law, therefore, may protect a unique company logo in addition to trademark law. While it’s beneficial to layer trademark and copyright protections if applicable, only trademark law protects businesses from brand confusion.

Common Law v. Registered Trademarks

Unregistered or common law trademarks include company names that are (1) distinctive and (2) used in commerce but not registered by the USPTO. It is not strictly necessary to register a trademark with the USPTO to obtain geographically limited trademark protection. These common law trademarks are often protectable under the “first use” doctrine in a limited locality. The ™ trademark symbol should be used to designate that a company claims unregistered trademark rights.

The registered trademark symbol ® designates registered trademarks.  There are substantial benefits to registering a trademark with the USPTO including:

  • A presumption of ownership and validity
  • Default nationwide rights
  • Puts other businesses “on notice” of a trademark, potentially preempting infringement

These protections are not generally available to unregistered trademark owners.

How Much Does it Cost to Trademark a Company Name?

Our flat professional fee to prepare, file and do basic follow up through registration is $650.  The government filing fee is $225 per class.  If the application is filed in multiple classes the government filing fee will increase.  If your company provides apparel and educational services and you file for both, you would incur $450 in government filing fees.  Further, if your company utilizes separate brand names or logos, a separate application should be filed for each.

How Long Does It Take to Trademark a Company Name?

The USPTO estimates an attorney will begin reviewing your application approximately four months after the application is filed, and it will take another few months for the trademark to register.  The USPTO typically reviews your application for completeness, conducts a clearance search, determines whether the requested trademark is protectable, i.e., fanciful, arbitrary, or suggestive, and reviews your filing basis documentation.  If the examining attorney determines that more information is needed, has questions about your application, discovers an error, or does not believe your company name is protectable, an office action may issue. You will then have 6 months to respond and if no response is filed the application will abandon.

Trademarking an International Company Name

Company owners should register their unique corporate name in every nation where their services are offered or their products are made, sold, and marketed.  International trademark applications filed through the Madrid Protocol allow trademark owners to submit a single trademark registration application to a selection of over one hundred nations, representing over 80% of world trade.  This type of international cooperation and trademark protection encourages business owners to expand into the global marketplace.

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For assistance with registering your company name as a trademark, please contact us today.

 

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