How to Trademark a Name
Starting a new business often requires you to register your company name with a state or local jurisdiction as part of an assumed name filing, or obtain a certificate to conduct business in the area. But these filings do not provide any trademark rights to the name.
Many businesses also erroneously believe having a registered domain name gives them trademark rights. In order to protect your brand from trademark infringement, you need to register the trademark with the United States Patent and Trademark Office (USPTO). This requires filling out an application and paying an application fee.
Step 1: Choose an Eligible Trademark
Not every business name will be eligible for federal trademark registration. In order for a trademark name to be entitled for registration, it must identify the source of goods or services. A trademark must be in commercial use to stay active. In other words, you cannot simply trademark the name “Lola Jane” because you like how it sounds. You would need to be selling products or services with the “Lola Jane” trademark in order for the trademark to be active.
Certain types of trademarks are not qualified to receive trademark protection.
- Generic: Generic trademarks are common words used to identify everyday products, so they are not eligible for trademark protection. For example, you wouldn’t be able to trademark the name of a hair salon called “Haircuts.” Trademarks can become generic over time and lose their protection. This typically happens if the trademark owner is not diligent about enforcing their trademark rights. Think “escalator” or “dry ice,” which started out as trademarked terms, but have now become too ubiquitous of words to qualify.
- Descriptive: Descriptive names merely describe the qualities of a product or service. This also includes trademarks with proper names, like “Mike’s Flower Shop.” You may be able to register a descriptive name if it has a secondary meaning.
Many businesses waste money and time trying to register company names that are unlikely to ever be approved by an examining attorney. In order to ensure the greatest chance of success in trademarking your company name, check to see if your desired trademark name falls under the categories of the strongest trademarks.
- Fanciful: A fanciful trademark is a word that is invented solely to function as a trademark. Notable examples include “Exxon” and “Kodak.” Fanciful trademarks are considered the strongest type of trademark.
- Arbitrary: An arbitrary trademark takes a name for an unrelated word and applies it to a brand in a creative, unexpected way. Some of the most famous examples of arbitrary trademarks are “Apple” as an international technology company and “Shell” as a gas company.
- Suggestive: A suggestive trademark subtly hints at the nature of the goods or services being offered by the company, without outright stating what the industry is. An example of a suggestive trademark would be “Q-Tips,” which are suggestive of cotton swabs.
Before investing resources and time into applying for a trademark, ensure that your trademark name is unique and strong enough to be eligible for registration.
Step 2: Conduct a Trademark Search
Once you have selected a strong trademark, you’ll want to ensure it’s not already taken by another trademark owner. You can run a search of all registered trademarks, using the Trademark Electronic Search System (TESS) tool on the USPTO website.
When searching for your desired trademark, be sure to try out variations in spellings. Trademarks that sound similar might be deemed confusingly similar even if the spellings differ. Additionally, trademarks with special characters in their name might be missed in a simple trademark search. It is recommended that you have a trademark attorney handle this search for you, so you don’t miss any potential red flags.
You should also widen the breadth of your search beyond TESS. Unregistered trademarks are still afforded some degree of protection under common law trademark rights. Running a search of domain names could clue you in if another business is operating under your desired trademark name. A Google search can be similarly helpful.
If you notice a business that is using your desired trademark name but believe that you were using the name first, the other party might be in violation of your common law trademark rights. Speak to a trademark attorney to determine your rights in the situation and how to move forward with registration.
Step 3: Submit an Application
After you have conducted a thorough trademark search, your next step is to submit an application. If you are a foreign domiciled business, you need to have this process handled by a trademark attorney. Otherwise, it is possible complete the application yourself. However, the USPTO advises you to have a trademark attorney handle this process for you. Many applications are rejected simply because the applicant failed to provide clear information about their trademark. Having a trademark lawyer complete the application helps prevent delays in your registration.
The application cost is usually $225 per class of goods or services being protected. The application requires you to provide the following information:
- Contact information of trademark owner
- The trademark name and the types of goods or services that will be used in conjunction with the trademark
- The format of the trademark (i.e. if the trademark uses standard characters, or if it is a soundmark).
Once you have submitted your application, it will be passed onto an examining attorney for review. It typically takes about four months for the examination to take place.
Step 4: Respond to Office Actions and Oppositions
You will be alerted if there is a problem with your application. The most common reason an application is rejected during this stage is if it is confusingly similar to an existing trademark. You’re less likely to experience this unpleasant surprise if you have a trademark lawyer conduct a trademark search before applying.
In order for a response to an office action to be considered timely, you generally must reply within six months. The nature of your response depends on the specific issue with your application. For example, you may be missing information and need to simply clarify something by sending an email to the examining attorney. Other office actions require a more calculated response. If your desired trademark name conflicts with an existing trademark, you might consider discussing your options with an attorney. It is possible to get a registered trademark cancelled, provided you can prove certain things such as prior use of the trademark.
Once your trademark has been approved by the examining attorney, your trademark will be published for opposition. The USPTO publishes the Trademark Official Gazette (TMOG) every Tuesday, which features every trademark published during the week, along with a list of renewed registrations and trademark cancellations. When it’s time for your trademark to be published in the TMOG, you should make sure that all the information there is accurate and contact the USPTO with any corrections as soon as possible.
The opposition period is 30 days. During this time, trademark owners who can demonstrate they have a vested interest in the matter may oppose the registration of your trademark if they believe it conflicts with their own rights. You will be notified about any oppositions filed against your trademark, and you typically have 40 days to respond.
Trademark oppositions are handled by the Trademark Trial and Appeal Board (TTAB). These proceedings function as mini litigation cases, and both parties will be expected to comply with the schedule laid out by the TTAB. Much like an ordinary trial, there will be a discovery period where both sides are encouraged to gather evidence that will strengthen their case. It is highly recommended by the USPTO that you have an attorney assist you with proceedings. The TTAB will then issue a decision about the registration of the trademark in question.
If the opposition period passes and nobody comes forward, your trademark should eventually register.
Step 5: Monitor Your Trademark and Renew Registration
Registering a trademark allows you to enjoy several benefits:
- Publication of trademark rights which may help ward off infringers
- The ability to use the registered trademark symbol in conjunction with your trademark (®) which also warns others about your rights
- Presumption of ownership and validity, should an infringement issue arise
- Basis of filing for international trademark registration
After your trademark is federally registered, it becomes your responsibility to monitor its usage and respond to any infringement. A trademark attorney can make this much easier by setting up a trademark watch for you, and provide regular updates about their findings. If you want to handle this process yourself, you will need to be diligent about regularly checking the Trademark Official Gazette. You may also want to set up a Google Alert to help you keep an eye on your trademark.
Failing to respond swiftly to trademark infringement could result in damage to your company’s reputation and profits. When responding to infringement, your first line of defense will be to send a cease and desist letter to the infringing party. A cease and desist letter informs the infringing party of your rights, and warns that further legal action will be taken if the unauthorized usage of your trademark does not cease. Cease and desist letters are often more effective when sent by a trademark attorney, rather than the business owner.
Choosing to Remain Unregistered
Common law trademark rights provide companies some level of protection, even if they never register with the USPTO. Many “Mom and Pop” businesses that operate locally opt to not register in favor of leaning on their common law rights. These rights tend to only extend in a specific region. For example, if you own a car wash, another car wash with an identical name would likely infringe if they opened right down the street. However, a similar use in a neighboring town could be fair game.
The unregistered trademark symbol (™) indicates that the name is being claimed as a trademark. This symbol does not, however, guarantee that the user of the symbol has any trademark rights in the situation.
Still, it is highly recommended that you invest in the application cost and register with the USPTO. Doing so allows your business the opportunity to expand statewide and nationally, and protects against potential infringing parties from taking advantage of your lack of registration.