How Do You Trademark a Name: Everything You Need to Know
A trademark is what a company or a person uses to sell goods and services to the public.8 min read
2. What Is a Trademark?
3. How to Register a Trademark for a Company Name
4. Understanding Trademark Name Restrictions
5. Three Steps to Trademark a Name
Updated November 4, 2020:
How Do You Trademark a Name?
Inventors may often find themselves wondering, “How do you trademark a name?” The answer is that it begins with conducting a search of existing trademarks, filing an application with the United States Patent and Trademark Office (USPTO), and following up if there are any issues with the application.
What Is a Trademark?
A trademark is what a company or a person uses to sell goods and services to the public. This may include:
- Name or title of a brand
- Color scheme
- Anything else used to characterize or identify a business
These items help consumers recognize a business when shopping for goods and services and differentiate a company from its competitors. A company’s trademark can be extremely valuable as it is the defining factor when reaching out to consumers. For these reasons, infringing upon another company’s trademark can carry some serious legal consequences.
How to Register a Trademark for a Company Name
If a company or an individual wishes to trademark the name of a business, they should go to the U.S. Patent and Trademark Office, either in person or using the official USPTO website. A person can easily fill out the online application for registering a trademark. Before the person registers their company name, they need to check to make sure that the name is not already in use by another company or individual. The website features a trademark database that helps new companies quickly search through all known registered trademarks. If the trademark is already in use, the person can add an extension to the company name to help differentiate it from other existing trademarks.
It only takes about 90 minutes to file an application online with the USPTO. Once the application has been approved, the person is free to use that particular name, title, logo, or mark in the region in which their business operates. A person’s application will be rejected by the USPTO if that person’s name is already in use by another company or individual. The person will have to adjust their application accordingly until they find a name that’s still available. That’s why it’s important to check the trademark database before filing an application.
It usually costs about $275 and $325 to register a trademark with the USPTO. The office requires applicants to pay a fee online or by mail. The application itself requires the person to fill out some information regarding the trademark, including:
- The type of goods and services being sold to the public
- How long the trademark has been in use
- Whether there’s a logo or a design component involved
If there is a logo attached to the trademark, the user might have to upload a copy of the image on the website. The applicant might also need to provide a real-world example of how their trademark is being used in the market.
If an applicant doesn’t want another company or individual to replicate their trademark using a similar name, they should add a domain extension. This prevents other people from simply adding an extension to the registered trademark in order to get approved by the USPTO, thus resulting in a slew of companies with similar names and trademarks.
Some applicants might decide not to upload a copy of their logo in order to get broader protection from the USPTO. The company may decide to change its logo at a later date. Instead of having to possibly file a new application with the USPTO, the company can simply add a written description of its logo.
All applicants should hear back from the USPTO within six months of filing their application. The office will either accept or reject the application depending on whether the applicant included the right information and whether the chosen company name is already in use. A person does not need to register with the USPTO in order to sell goods and services with a particular trademark, but the company will get into a trademark dispute if there is another company using a similar logo, design or company name.
Selling goods and services with an original name, design or logo automatically protects the individual or the company from trademark infringement, but registering with the USPTO grants the individual or the company some additional benefits. If the person or company discovers later on that another company or individual is infringing upon their trademark, they can file a lawsuit restricting the other company from using its trademark.
Anyone is free to use the trademark symbol “TM” and the service mark “SM” alongside their company name or logo. This is true even if the person or company has not registered with the USPTO. Adding the “TM” or “SM” symbol sends a clear message to consumers that owners of the company will defend their chosen trademark in court if someone else tries to copy it.
Understanding Trademark Name Restrictions
In order for someone to trademark a company name, design, logo, or phrase, they must acknowledge that the trademark will be used for commercial purposes, which means that they intend to sell goods and services to the public. A person cannot register a trademark with the USPTO for personal purposes. The applicant must state what industry the trademark will be used in and what kinds of goods and services the company or individual intends to sell. This helps the USPTO determine whether it will accept or reject the application.
All registered trademarks must be distinct from all other registered trademarks. Generic names that simply list the goods and services being sold such as “Good Haircut” or “Baked Goods” will be rejected by the USPTO. That’s why it’s important for business owners and individuals to come up with unique names for their companies. Many companies and individuals will use a name that’s commonly associated with one industry and then use that name in another, completely unrelated industry. Apple is a good example. The USPTO would not approve an application with the name “Apple” for a produce company. But when applied to a consumer technology company, the name “Apple” can be trademarked successfully.
Successful trademarks are those that use language that describes the product without naming it outright. A good example is “Keep Off.” The trademark gives the consumer a good idea of what the product does without naming it specifically like “Bug Spray.” The USPTO rules on applications based on whether it will create confusion in the marketplace or among consumers.
The USPTO will reject an application if it’s too similar to an existing trademark, but it may allow the trademark if the two companies operate in different industries or if they sell substantially different goods and services. Therefore, every applicant needs to list the goods and services being sold or the ones that the company intends to sell.
If a consumer were to encounter two similar trademarks, they would assume that the goods and services being offered come from the same company. This means that a consumer might purchase goods and services under false pretenses. It could also mean that one company is benefiting unfairly from another company’s brand.
In some cases, the USPTO will approve an application even it has the same exact name as another existing trademark. This happens when the USPTO is fairly certain that the two companies will not overlap. This was the case with the name “Blue Ivy.” The musician Beyoncé registered the name for her upcoming line of baby products. And yet a small-business owner from Boston was recently granted permission from the USPTO to use the same name for their wedding planning company.
An individual can use part of their name in the trademark if the applicant can meet certain conditions. The applicant needs to prove that there is a second meaning to the name. They also need to show the USPTO that the name will help distinguish the company from its competitors in a particular market.
Three Steps to Trademark a Name
Conduct a Trademark Name Search
Trademarking a name begins with conducting a trademark name search. This simple step allows the company to find out whether a trademark is already in use by another company. This will help the company save time and money in the long run. If the applicant spends money on the processing fee only to get rejected by the USPTO because the trademark is already in use, they will have to file a new application, or they will encounter some legal troubles down the line.
If the applicant wants to do everything they can to make sure that they aren’t rejected by the USPTO, they can also perform a basic internet or Google search using their new trademark. The applicant can also search through local business directories to prevent any overlap between their new company and its eventual competitors. While a person can easily search the USPTO’s trademark database, there could be other companies using a similar name that is not registered with the USPTO. These similar trademarks may be protected by other common trademark laws in a specific region.
File an Application
The next to step to registering a trademark is to file an application with the USPTO. The application includes:
- The name and address of the person who wants to own the trademark
- The goods and services the individual or company wants to sell
- An example of the trademark being used in the real-world
- Whether the applicant intends to submit an example at a later date when the company is up and running
Respond to Office Actions and Oppositions
Once the application has been filed with the USPTO, the office will assign a trademark attorney to the case for review. If everything checks out with the application, the attorney will approve the application. If the attorney notices any issues with the application such as missing information, a lack of intent to sell goods and services to the public, or a name that’s too similar to another registered trademark, they will send a letter to the applicant telling them that their application has been denied and the reasons why. The applicant will then have a certain period of time to respond.
It’s imperative that the applicant respond to the Office Actions by the posted deadline. Otherwise, the application can be denied, and the applicant will have to start from scratch. Once the applicant has responded to the letter, the application will be posted in the Official Gazette, an online publication that lists pending trademark cases. This gives others in the industry a chance to dispute the trademark.
If another company or individual opposes the applicant’s trademark, the applicant can try to resolve the matter themselves by reaching out to the opposing party or by hiring a trademark attorney. Any opposition to the trademark needs to be resolved before the USPTO can proceed with the application. The application will then get approved if the applicant filed with the intent to use the trademark in commerce. If the applicant filed with the intent to use the trademark at a later date, they will receive a Notice of Allowance. This means that the trademark will be fully registered once the applicant begins conducting business using the trademark.
It's the applicant’s responsibility to keep an eye out for trademark infringement. If the person notices another company with a similar trademark, they can send a cease and desist letter informing them that the trademark is already in use and has been registered with the USPTO. The other company can either stop using the trademark or resolve the matter in court.
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