How Do You Patent a Name?

You may be interested in learning how to patent a name in addition to how to patent an idea, however, you cannot patent a name. Instead, you can trademark it by filing an application online at www.uspto.gov. It takes about 90 minutes, costs range between $275 and $325, and you will need to check the Trademark Electronic Search System to make sure the name is not already taken.

There are certain professions or businesses where the name of the owner becomes the identity of the brand. The business services provided by actors, professional athletes, performers, fashion designers etc. are identified almost exclusively by their names. In this sense, it is important for people in such professions to make sure that their names are protected.

Compared to registering a word, getting a trademark for a name is difficult. You need to prove that your name is popular and/or unique to the extent that the consuming public automatically thinks of you when hearing that name and that the goods or services you provide are linked to your name. Fashion designer Ralph Lauren could trademark his name because it is the brand name for his business, designer clothing.

Trademarking also helps prevent misuse of the name of a well-known personality. For example, what prevents an individual from conducting acting classes under the name "Morgan Freeman's Acting Studio", without formal consent from the actor? Public figures also trademark their names to prevent incidents that cause misinformation among the public, affecting the individual's reputation.

Copyrights, Patents, Trade Secrets and Trademarks: How They Are Different

All of these ownership protections are meant to safeguard businesses or individuals, but they differ in what they provide protection for.

  • Copyrights are given to authors to claim ownership of their original works. This covers works of art, cinema, literature, music and similar domains, both hardcopy and digital. With a copyright, the person who created it has exclusive rights to the use of their work in any form. An example of a copyright looks like this: © 2017 John Doe.

Registering a copyright is done with the United States Copyright Office.

  • Patents work much the same way but are awarded for inventions by the country where the inventor has applied for the patent. Once a patent is awarded, the inventor has exclusive rights to manufacture the invention. Contrary to popular belief, a name or word cannot be patented.

Patents are issued by the United States Patent and Trademark Office (USPTO).

  • Trade secrets are business information such as recipes, manufacturing processes, tricks, and formulations that the owner wishes to keep confidential within their business. The recipe for Coca-Cola is a classic example.
  • Trademarks have a more "brand-oriented" purpose. They are used by companies and individuals to protect certain words, phrases and images that they would like to exclusively link to their business. Things like brand names, logos, and brand statements all can be protected under the trademark laws.

The 'Nike' text and 'The Swoosh' are examples of a brand name and a logo which are registered trademarks owned by Nike Inc. Trademarks, like patents, are issued by the United States Patent and Trademark Office (USPTO). You can read more about the differences between various intellectual property protection here.

Unregistered and registered trademarks

A trademark can be claimed by a business or an individual by just appending the name or logo with "TM" or "SM", for example "Business Name™". "TM" is used if the company is in the business of selling goods. "SM", which stands for service mark, is used by companies who offer services. Both "TM" and "SM" fall under the category of unregistered trademarks.

Although these are free to use, unregistered trademarks provide minimal protection, mostly in the form of a cease and desist notice, in case of an infringement. Enforceability is usually limited to the locality where the business is based.

A registered trademark, displayed with the symbol '®' provides more protection to the owner, including the option for nationwide protection, the right to sue for damages, and the option to recover attorney fees and costs incurred during the legal proceedings.

How to file a registered trademark application 

  1. A trademark can be applied only for names or phrases which are either currently used for commerce (Application for Mark in Use) or those that will be used in this way in the foreseeable future (Intent to Use Application). You will be required to enter the first use date while filing for the trademark application, so make sure this eligibility is met before applying.
  2. If your business is internet based, then it is advisable to not register the business along with the web extension such as .com or .net. This prevents other businesses from registering the same name with a different extension.
  3. Ensure that the name, logo, or brand statement are not already trademarked. This is done using the USPTO database by searching for keywords you would like to trademark. Have backup names and phrases so that in the event the word you searched is already trademarked, you have options to carry your branding forward.

If you are applying for a design or a logo, you can check existing trademarks using the Design Search Code Manual provided in the USPTO website.

Another check that needs to be done is to confirm that there are no trademarked names or phrases that sound like the one you are filing for. This is vital as trademark rules dictate that no two trademarks should cause confusion to the consumer while choosing brands. If your trademark is found to conflict with this, your application may be rejected by USPTO. Get more details about preventing trademark infringement here.

  1. Avoid words or phrases deemed too generic. Names like "The Coffee Shop" or phrases like "The best restaurant in town" are considered unoriginal and too commonly used to be granted an exclusive trademark.
  2. Once you have finalized the word you need to trademark, you may apply for it online using the Trademark Electronic Application System (TEAS) or file a paper application. The categories of goods and services for which the mark is used need to be provided while filing the application. The fees vary from $275 to $375 and can be paid online with credit card, electronic fund transfer, or as deposit to the United States Patent and Trademark Office account.

If your application is rejected, the fees will not be refunded, so it is a good idea to hire an attorney who specializes in trademarks to make sure that your application process goes through without any complications or delays.

The maximum turnaround time for a trademark application with the USPTO is around six months. They will contact you if any further information or actions is required. Once your application is successful, your trade name is published in the Official Gazette of the Patent and Trademark Office as a public announcement that you've been granted a trademark.

Companies Engaged in International Business

Trademarks issued by USPTO are valid only in the United States. If your company does or wishes to do business outside the country, then you might want to apply for an international trademark. If you have a US trademark, you may be eligible to apply for an international trademark under the Madrid Protocol. The application is filed with the International Bureau of the World Intellectual Property Organization (WIPO). You may seek help from The United States Patent and Trademark Office to file the application, as they will be the first round of assessment before it is forwarded to WIPO.

Trademark and Copyright Overlap

A copyright and trademark may overlap if the logo or brand name is unique and is your own creation. For example, words like "Tumblr" and "Instagram" are newly coined and maybe eligible for copyright protection, as well as being trademarked names for companies.

Cyber-Squatting

"Cybersquatters" are those who register domain names and then try to sell it to interested parties at inflated rates. Cybersquatting is a major problem for people trying to register domains with their trademarked words. This becomes even more problematic for celebrities when domains and websites run with their names and they have no control over the ownership or the content.  The Anti-Cybersquatting Consumer Protection Act was passed to prevent such scenarios. Under this act, if you have a trademark on a word or phrase, you may file a suit to claim ownership to a domain registered with the same word without your consent.

In order to have a domain name canceled or transferred to you, the trademark owner, you must prove that:

(a) the domain name is the same or similar enough to the trademark to create confusion

(b) the domain name is registered with no real purpose or interest

(c) the domain is being used in bad faith

If the domain is unlawfully registered outside the United States, then you have to take it up with the Internet Corporation for Assigned Names and Numbers (ICANN). Nicole Kidman, Venus and Serena Williams, Julia Roberts, and Morgan Freeman are some of the celebrities who have filed suit against unlawful use of their names.

Filing for a trademark is only the first step to getting your brand up and running. There are a few important things you need to do to make sure your trademark provides your brand name with the protection it requires. If you need any help with trademarks, post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top five percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard and Yale Law and average 14 years of legal experience, including work with or for companies like Google, Stripe, and Twilio.