Can You Trademark a Name: Everything You Need to Know
The U.S. Patent and Trademark Office can register an individual's name as a part of a trademark if the name is extensively utilized or distinctive. 9 min read
Can You Trademark a Name?
“Can you trademark a name” is a common question. The U.S. Patent and Trademark Office can register an individual's name as a part of a trademark; however, it only grants protection to names that are extensively utilized in commerce or ones that are distinctive. Logos are protected to established names that identify a product or company from other competitors. Typically, an individual cannot trademark their own identity; however, some entrepreneurs can protect their name when it is used in the course of their business.
How Do I Trademark a Name?
The U.S. Patent and Trademark Office is unlikely to register surnames or a person's name or likeness for trademark unless some specifics are met. When a person needs a trademark to protect their reputation, then applying for a trademark is warranted. In trademarking a reputation, one should show that the identity has a "secondary means" and that it is being utilized in advertising and commerce and is widely known. In some instances, a reputation may be trademarked when it's one among a form. However, this requires substantial proof. To verify whether anyone else is using your name, do a trademark search.
Should You Trademark Your Name?
When should one trademark a name? This can be any phrase, image, design, or a mix that identifies and distinguishes a specific product or company. Logos may be granted for distinctive names, logos, and slogans. The names of individuals and corporations, enterprise logos and symbols, and specific sounds can all be trademarked. Logos determine a product, service, particular person, or factor from others in an identical field. Importantly, trademark infringement is a severe offense and serves to protect your interests and assets.
Celebrities have often tried to protect their name from illegal use. An example of this occurred in 2005 when Morgan Freeman successfully won the right to apply for the trademark of his name from the USPTO. This right was granted following the illegal use of Freeman's name in a domain name held by Mighty LLC, who had used it to divert traffic to a commercial search engine. The ruling found that this practice was in bad faith. The arbitrators of the World Intellectual Property Organization upheld the action, saying that due to Freeman's well-known and illustrious career in film and entertainment, his name was recognizable enough to warrant protection.
What's in a Web Name?
Almost anyone can register a name for a website. This has led to many people staking a claim on domain names for existing products, or that are very similar to well-known marks. Eventually, when the owner of such a name discovers this, they are asked to pay a fee to the squatter to acquire the domain name. To guard trademark owners from such domain-name antics, Congress signed into regulation the Anticybersquatting Consumer Protection Act in November 1999. Per the Act, a trademark proprietor can sue for damages and get back a site title from an individual that has registered it only to sell to a company that has an identical or similar well-known trademark. The Internet Corporation for Assigned Names and Numbers (ICANN) was also established and created a licensed supervisor for domain registrations and adopted an online arbitration system to resolve disputes.
How Is Domain-Name Infringement Determined?
The proprietor of a legitimate name should show that the domain name in question is identical or confusingly similar to their trademark and that the registrant has no proper or respectable interest in using the domain name. A number of celebrities have been successful in getting their domain names back from domain-name squatters. There is now also an arbitration system on ICANN, The Internet Corporation for Assigned Names and Numbers, that resolves conflicts. The courts are also an alternative for dispute resolution, especially if damages are being sought.
Proving Cybersquatter Infringement
For a domain name to be canceled or transferred to a trademark owner, the owner must be able to prove that the domain name was either identical or similar enough to be confusing. The owner also must prove that the person who owns the domain name has no legal rights to it and is using it in bad faith.
There have been many celebrities who have successfully gained domain names from cybersquatters, though cases against cybersquatters are not always successful. An example of a successful case was with fashion designer Donna Karen. A man had registered a domain called dkny.biz while Karen owned dkny.com and donnakaren.com. She was able to prove to the WIPO that the domain name was filed in bad faith and had it transferred to her company.
A good way to secure added protection against cybersquatters is by trademarking your name to prevent others from benefiting financially.
What Is Considered a Business Name?
Entrepreneurs can use their private name as a part of an enterprise name that may be registered with both the state or other proper authorities, such as the Small Enterprise Administration. A registered enterprise name, such as "Robert Doe Consulting," can provide a proprietor with a proper trademark and demonstrates business use of the identity. In utilizing a private name as a part of an enterprise name, although the enterprise bears the proprietor's name, it's legally thought of a fictitious identity, in line with the SBA. Registering an enterprise identity in a state only registers the identity in that state and not necessarily other states. For nationwide coverage, it may be worthwhile to register as a trademark with the patent office.
What Qualifications are Required to Trademark a Name?
Many people trademark their names. Actors, authors, sports activities figures, and different celebrities typically trademark their names. For example, a celebrity or politician can trademark her identity (really it is a service mark, not a trademark). This can be done in a particular category, such as instructional and leisure providers, offering motivational speeches within the discipline of politics, tradition, enterprise, and values. To trademark your personal name, it is important to utilize it in the course of a business. Then it is important to consider whether the use of that name by others is also within your particular business space. In other words, does their use cause a consumer confusion and difficulty in identifying your products or business. If not, they would not be infringing on your trademark. Having a trademarked identity in a single class does not stop somebody from claiming it as a trademark and utilizing it in another class.
Can a Fanciful or Arbitrary Name be Trademarked?
Interestingly, the best names for trademarking are either "fanciful" or "arbitrary." The USPTO says that a fanciful trademark is best for trademarking. Fanciful names are made-up names. These names often have no link or correlation with an item or service. In a search of the trademark knowledge base, one would see that the title "John Smith" (linked to an enterprise) was listed as "fanciful." Names like Yahoo are fanciful. Arbitrary names are usually not made-up; however, they are also not usually logically linked to the services or products offered. For example, "Shell" is an example of an arbitrary title.
How Do I Protect My Trademarked Name?
After you trademark your name, you have to protect and manage it; otherwise, it is possible to lose the trademark. The U.S. Patent & Trademark Office does not actually do anything to actively protect a trademark. Instead, it is up to you to regularly monitor use of the trademark, especially by competitors. If someone does use the trademark, it is important to present evidence of "confusion within the public." Additionally, it is necessary to show that this confusing is hurting you financially.
You may simply say "somebody is utilizing my identity;" however, you also have to present that there's confusion and that the confusion is hurting you financially. For example, let's say that your trademark name is “Blue” and you provide financial services. Then another person decides to name their restaurant “Blue.” Would a regular consumer confuse the two? It's unlikely, and therefore, there isn't an infringement of your trademark. However, if someone uses “Blue Finances,” that could certainly be an infringement as it is in your business space and also substantially uses the same wording as your trademark.
How Is a Trademark Registered for a Company Name?
Registering a trademark for an organization identity is fairly straightforward. Many companies can file in less than a couple hours without any lawyers. Unlike a patent, there isn't really any specialist knowledge required to understand a trademark. Thus, it is pretty easy to go to the U.S. Patent and Trademark Office website, www.uspto.gov, and register. Prior to submitting the registration, do a search in the Trademark Electronic Search System (“TESS”) database to ensure another firm hasn't already registered an identical or related mark for a similar class of products or providers you supply. U.S. trademark protection is granted to the primary entity making use of a specific mark within the geographic space that it operates, no matter whether or not the mark is registered.
If your chosen mark is already registered by another firm — even though you used it first — your registration will probably be rejected. At this point, you'll most likely need a lawyer to assist in working things out. Online trademark registration fees are between $275 and $325 and requires information such as the class of products and providers for which the mark will probably be used, date of the mark's first use in commerce, and whether or not there's a design element to the mark you're looking for. Web companies registering their names should do this while concurrently registering their internet domain name.
Getting a trademark without the area extension will assist in stopping different companies from registering the identical mark by simply including a unique extension. Don't designate a selected design of your trademark as a way to get the broadest protection. Based on the U.S. Patent and Trademark Office website, a response usually takes six months.
If your required mark is just like another registered mark, or sufficiently similar to confuse individuals, there's an honest probability that your registration will be contested. Additionally, it's difficult to register names deemed too generic or descriptive (for example, “The Ice Cream Store” or “We Promote Food”). In other words, unique and arbitrary names are more suitable.
Even when you don't register your mark, you can nonetheless use a mark that you have adopted for your products and business. Anytime you declare rights to a mark, you can use the "TM" (trademark) or "SM" (service mark) image, no matter whether or not you have filed with the patent office. Registering your mark, however, will give you added protection according to trademark regulations. Moreover, it would add considerable weight to any court proceedings in possible future disputes. Keep in mind that the mark "®" can only be used after the mark is registered with the USPTO.
How Is a Business Name Registered Within a State?
If you apply to be an organization or an LLC, the Secretary of State's office does a search to guarantee that your proposed enterprise name isn't already in use by another firm in your state. Each state has its own legal guidelines about how different your mark has to be from the name of a different enterprise. For example, in some states “Randy's Bar” cannot be used when there's already a “Randy's Bar” registered. Different states may consider such an application and consider whether “Randi's Bar” is related and deceptive. As soon as your LLC or company name is authorized, your name is protected within the state. A different enterprise cannot register an LLC or company with the identical name in that state. Nevertheless, there's nothing to stop an enterprise that operates as a sole proprietorship or partnership from utilizing your name within the state as they fall within a different category.
As a small business, such trademark and business name protections are typically sufficient. A small business is less likely to come into direct competition with an enterprise in another state. Moreover, there is little likelihood that a consumer will be confused by the similarly-named enterprises. However, with the advent of the internet, and if your business expands to other states or nationwide, it may become necessary to consider filing your trademark at the federal level.
How Do I File for Federal Trademark Protection?
The proprietor of a trademark has unique rights to the trademark and wants to stop anybody else from utilizing it. Filing for a trademark can take upwards of six to 12 months with the patent office. USPTO trademark registration is costlier and typically involves a larger enterprise. Additionally, it provides protection in all 50 states. In contrast to copyrights or patents, logos have a limitless lifespan as long as you complete regular renewals.
Hiring an Intellectual Property Attorney
If you are considering trademarking your name, it may be in your best interest to consult with an attorney who specializes in intellectual property. Getting a trademark can be a complicated process, and hiring an attorney can help make sure it's done right.
If you're looking to protect your business trademark by registering it, get help by posting your legal need at UpCounsel's marketplace. The lawyers from UpCounsel are recruited from the top law schools in the U.S. and have on average 14 years of legal experience. They've worked for both individuals and large enterprises such as Google. Let them work for you at UpCounsel.