How to Trademark a Name

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How to Trademark a Name

How to Trademark a Name is part of our How to Trademark series.  This page covers how to copyright a name and how to patent a name since generally a name can only be protected by trademark.

 A trademark helps entrepreneurs protect their company’s reputation while also differentiating their products and services from those of competitors.  Trademarking a name boils down to proper registration with the U.S. Patent and Trademark Office (USPTO), but numerous hurdles – including your competitors – may stand in the way.  This page provides a general outline on how to trademark a name.

Trademark Search

Even though it’s one of the most important steps in how to trademark a name, a trademark search is also one of the most overlooked. This is because a trademark search is not required to file a trademark application with the USPTO. In fact, it’s fully possible that your brand identifiers may face no issues in the registration process even without a clearance search. Unfortunately, this scenario is unlikely to occur.

The number of trademark filings in the U.S. are continuing to increase at a healthy pace.  With the numbers constantly rising, the chances of your trademark being similar to a registered or applied-for trademark is also on the rise.

A thorough trademark search will decrease the likelihood of that your trademark conflicts with others. The USPTO offers several search types:

  • Basic word mark: Names are simple to search with the basic work mark query.
  • Word and/or design mark: In addition to names, you can search designs with this function. This helps if you’re learning how to trademark a name and
  • Freeform word/Design mark: Basic word and logo queries are available, but more in-depth searches can utilize Boolean logic function.

These trademark searches can be performed here, but this isn’t considered a full clearance search.  Though common law trademarks aren’t listed on the federal registers, for instance, you may still be precluded from using them. Additionally, basic word searches won’t always find trademarks that are confusingly similar.

Even in a situation where no exact match is found, your trademark may create a likelihood of confusion with another trademark. In these situations, your application could be rejected by the USPTO, opposed by a third party, or even land you in court over claims of trademark infringement. This makes it vital that you go beyond the basic search provided online.  For more information please see our trademark search page.

How to File a Trademark Name

Trademark applications can be filed at the USPTO website using the Trademark Electronic Application System (TEAS).

With regard to government filing fees, there are three fee tiers that your application may fall under. These fees are on a per-class basis, so if your trademark falls under multiple classes, your price will increase.  These relate directly to how you file your application.

  • TEAS Plus: At $225, this is the lowest fee to file a trademark. To qualify for this fee all submissions and communications must be done electronically and you must use pre-determined descriptions of goods and services.
  • TEAS RF: The reduced fee option is $275. It’s not as strict as TEAS Plus, but it still requires electronic submissions and communication. At this level you are not required to use the USPTO pre-approved descriptions of goods and services.
  • TEAS Regular: With this option you are not required to communicate electronically with the trademark office. Applications at this level cost $400 and only dictates that minimum filing requirements be met.

There are also several important documents and other pieces of information you should have before using the USPTO online system. Fortunately, the system wizard will walk you through most of this.  Prior to starting, though, make sure you have the following available:

  • The trademark at issue.
  • The name and address of the trademark owner or signatory.
  • The entity type (individual, corporation, etc.) and state or country of formation.
  • Proof that sufficient use in commerce has occurred or will occur.
  • Detailed descriptions of the goods or services being offered.
  • A drawing of the trademark if a logo.
  • The date the trademark was first used in commerce.

Submitting this information and required payment through TEAS is the basic procedure to get the registration process rolling. You’ll immediately receive a filing receipt with a serial number for your trademark, but you can usually expect to wait three to four months before the USPTO examining trademark attorney even reviews your application. This begins the second phase of registration.

Trademark Classes

After submitting your trademark application, one of the many things reviewed by the examining trademark attorney will be the descriptions of goods and services. The USPTO’s classification system helps to distinguish brand identifiers between different industries and product/service categories. The trademark classes that you file under will have a significant effect on the level of protection you receive.

If you produce goods or services in multiple categories, you should file under both classes when applying for trademark protection. While this will make your initial application more expensive, it will prevent third parties from registering your brand name or other identifiers under a different class.

The Trademark ID Manual can give you a better understanding of classes since it allows you to search specific phrases.  Your application must include at least one class in order to be registered. Many companies choose to go beyond this since more classes provide broader protection. You should review the Trademark ID Manual thoroughly to ensure that you don’t run into any unnecessary roadblocks in the examination process. An in-depth clearance search, appropriate filing type, and accurate class identification will pave the way for a smooth trademark registration process.

How to Register a Trademark Name

Merely submitting an application doesn’t mean you’re entitled to federal protection. In fact, you can’t use the registered trademark symbol until your trademark registers. Using the registered symbol prior to registration would be considered fraudulent.

The trademark registration process can be broken down into 7 simple steps.

(1)        Choose a Strong Trademark

Perhaps the biggest hurdle in trademarking a name is choosing the appropriate brand identifier. There are several types of trademarks to choose from, and if you’re looking for the highest level of protectability, fanciful trademarks are your best choice. These terms are completely made up and thus linked only to the trademark owner (e.g. KODAK).

If you file an application for a trademark that’s not registrable, you will forfeit your submitted fees while gaining no protection. As long as your brand identifier doesn’t create a likelihood of confusion, any suggestive, arbitrary or fanciful trademark is likely to be registerable. This isn’t the case with generic and descriptive trademarks.

Arbitrary identifiers are strong since – although they already exist in language – they aren’t directly linked to a certain product or service (e.g. Apple sells computers, not fruits). Suggestive trademarks are also inherently distinctive because consumers have to use their imaginations to link them directly to a brand (e.g. Jaguar signifies fast).

Trademarks that are merely descriptive are weak. This is because they simply describe a quality that could be shared by many products (e.g. Hot and Juicy Burgers or Cold and Creamy Ice Cream). Generic trademarks name a product/service category (e.g. blue jeans, motorcycles, microwaves), and thus cannot be protected as a trademark.

A descriptive trademark can be registered to the Supplemental Register, but this doesn’t provide all of the protections afforded to those on the Principal Register. This is typically done while a brand attempts to gain acquired distinctiveness in the market. If it’s proven that consumers now equate a descriptive name with a particular brand, it has acquired distinctiveness.

By comparison, a generic trademark can never be registered. It’s also important to ensure your protected identifiers don’t fall into generic use. This can result in trademark litigation and a loss of protection.

(2)        Conduct a Trademark Search

Once you’ve decided on your trademark, you should do a trademark search.  Although this isn’t mandatory, it’s still very important. A full clearance search will include the USPTO database, business names, common law usage and domain names. Steer clear of potential scams from untrustworthy companies who may offer these services. For information on the search we do, please see our trademark search page.

(3)        Prepare Your Application

All the forms you will need to apply for your trademark can be found here. Be as thorough as possible when filling out your application. Failure to provide all appropriate information can cause delays in processing. If significant issues are found, you could even face rejection and lose your application fees.

If you have not yet used your trademark in commerce, you can still file an intent to use application. You only need to submit a sworn statement that you have a bona fide intent of commercial use.  This should also be supported by some physical document showing an intent to use the trademark.  An intent to use application will allow you to get the review and opposition period out of the way before registration.

(4)        Monitor the Status of your Application

You should receive communications regarding the status of your application from the USPTO. Since technological errors can occur, though, it’s best to monitor its process in the Trademark Status and Documentation Retrieval system. Due to strict deadlines from the USPTO, this simple step can ensure you don’t experience trademark abandonment.

(5)        Work with USPTO Examining Trademark Attorney

Once your submission is received by an examining trademark attorney, the main test of registrability begins.  Three to four months after submitting your application, the examining attorney will check your application for legal compliance and ensure your descriptions, drawings, specimens and supplemental information are complete. You may receive an Office Action detailing issues with your application. Failure to correct these issues by the deadline will lead to rejection of your application.

Once the examining attorney approves your application, it is published for opposition. It’s during this point that a Notice of Opposition can be filed by a third party in the Trademark Trial and Appeal Board.

(6)        File a Statement of Use (for Intent to Use Applications only)

Knowing how to properly trademark a name means understanding what constitutes sufficient evidence of use in commerce. If you filed your application on an intent to use basis, you’ll receive a Notice of Allowance once the opposition period has ended. You must then file a Statement of Use proving actual use within six months.

If you’re unable to meet this deadline, you can request several extensions. Each of these will require a per-class fee.

(7)        Receive Your Registration

If you filed your trademark application based on actual use, you can expect your trademark to register around 9 months after filing. This process will be slowed down if you face any Office Actions or opposition notices. The timeline for intent to use applications can vary depending on how long it takes to submit your Statement of Use.

How to Trademark a Name and Logo

Generally the most important trademark to file is the word only version.  If you come up with a specific design element that is very important and unlikely to change over time, though, you may a logo based trademark application.  For more information please see our how to trademark a logo page.

 The issue with trying to trademark a name and logo in the same application is that they’ll only be protected in that specific form. If Nike had submitted a single application with their name above the famous checkmark, neither of the two elements would necessarily be fully protected when used separately. Putting yourself in that situation could leave third parties open to using a similar trademark.

The most important step in how to trademark a name and logo is to simply file separate applications. If cost is an issue at the outset, it’s generally recommended that you file for the word only version first. Whenever you choose to protect a logo, you should also consider color as a factor. Black and white submissions will provide full protection regardless of color, but you can also use a specific color if it’s part of your branding.

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Learning the nuances of how to trademark a name can take years of experience.  If you would like our assistance, please feel free to contact us at any time.

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