How to Trademark a Name
While requirements for the registration of all trademarks are similar‚ registering a name or a word as a trademark differs slightly from trademarking a logo. In fact‚ many businesses that have created both a name and a logo should file separate trademark applications to protect each. The first priority though is almost always to trademark the words only since it provides the broadest protection.
A business may trademark a word or words using standard characters or through stylized characters. Stylized word trademarks are hybrid logos and names. While a trademarked word or name simply communicates the source or name of the product‚ stylized trademarks communicate the source or name in a manner similar to a logo. Examples of stylized word trademarks include the stylized Google and Coca-Cola lettering. An example of a pure logo would include be Apple Computer’s bitten apple logo. For information on how to protect logos‚ see How to Trademark a Logo.
If a business wishes to protect both the name of the company or product and specific stylized lettering‚ two trademark applications will be necessary. For example‚ Google could receive a trademark for the word “Google” as well as for the stylized trademark. Because filing for words only is the strongest protection for the words‚ and filing separately for stylized lettering is the strongest protection for the stylized lettering‚ filing two separate applications offers the maximum protection.
Once a business has created a name‚ performed a trademark search‚ and sold the product bearing the trademark in commerce‚ it may file for an actual use application to register the trademark. If the trademark has not yet been used in commerce‚ a business may also file on an intent to use basis if it has a bona fide intent to use the trademark. The intent to use application cannot become officially registered until it is used in commerce. See How to Trademark.
To satisfy the use in commerce requirement‚ the trademark must actually be used in connection with products or services. If the name is simply the name of a business or enterprise‚ it is known as a trade name. If a company’s trademark and its trade name are one in the same‚ that name may be both a trade name and a trademark. For example‚ Google is both the trade name and trademark of Google‚ Inc.‚ whereas Church & Dwight is the trade name of the business that manufactures products bearing the “Arm & Hammer” trademark. If a business desires to protect its trade name‚ it should be sure to use that name as a trademark in conjunction with its goods and services.
During the application process‚ the applicant must select the applicable goods or services in which the products or services bearing the name are or will be sold or offered. The applicant must also be able to demonstrate that the name is distinctive. Once the application is completed and received‚ the USPTO will examine the trademark to determine whether it is eligible for registration. During this time‚ the application may be opposed by another seeking to protect a competing or similar mark. If the Applicant can establish priority of use‚ they will likely prevail over the Opposer.
Once a name is trademarked‚ it will receive protection for the goods or services at issue. However‚ outside of the specific goods or services listed‚ protection is not as strong. For example‚ a trademarked name in the food and beverage industry may not prevent another company from using that same name in an unrelated industry‚ such as the medical or heavy manufacturing industries. The registrant should continue to use the trademarked name in commerce to prevent abandonment of the trademark. In addition‚ the registrant is advised to monitor the trademark to identify infringers. If multiple infringers use the name without authorization‚ trademark rights can be lost.
Domain Names and Trademarks
Registration of a domain name alone does not constitute use or create trademark rights. For example‚ a company may use the trademark “MOVIEBUFF” to identify its products or services‚ but maintain www.moviebuffonline.com as its domain name. Without using the MOVIEBUFFONLINE trademark to identify products or services‚ that name would remain simply a web address and not a trademark.
A domain name can achieve trademark status if it is being used as more than a web address. The owner of a domain name must actually use that domain name in commerce to identify the source of its goods or services.