For many startups, legal issues are often the last to be dealt with. For one thing, legal issues require the involvement of lawyer. And who wants to deal with them? Lawyers can be both intimidating and expensive. The fact is, however, that some legal issues can’t wait. Trademarking your company name is a good example. In reality, trademarking the name of your company is a fairly easy and inexpensive step that you can take to start protecting your company and its intellectual property (IP). This article will attempt to put some of your concerns about the legal issues of trademarking your company name to rest.

Company Name vs. Trademark

The first thing to understand is that there is difference between registering your company’s name and filing for a trademark. Registering your business name is part of the application process with your state for becoming a corporation or LLC. The process will include determining whether or not your chosen name is available, that is, that the same or similar name is not already in use by another business in the state. Most states provide a search engine to check name availability. Contact the Secretary of State’s office in your state for more information.

Note, however, that registering your business name with the state protects the use of that name only in the state of incorporation, and other business may still be free to use the name in other states.

A trademark, on the other hand, is a symbol, word, slogan, design, color or logo that identifies the source of a product or service, and distinguishes it from those products made and services provided by others. The owner of a trademark has the right to prevent others from using marks that are “confusingly similar” and, by doing so, unfairly competing with the trademark owner.

A trademark can represent a product or service, or feature of a product or service. In regard to a company name, a trademark can also represent the company providing a product or service.

In the U.S., trademark registration is handled on the federal level through the United States Patent and Trade Office (PTO). Registering a trademark with the PTO is not required by law, but is highly recommended for the benefits conferred on the trademark owner. Most importantly, a registered trademark provides a company with the right to use the mark nationwide in connection with the goods and services it produces. A common law (non-registered) trademark only protects rights in the specific geographic territories where the owner is actually using it.

If you are interested in obtaining a trademark connected with your company name, here are the steps you will need to follow.

Steps to Trademarking your Company’s Name

Step 1: Make your Mark

The first thing to do is to decide on your mark. That is, you will need to determine the type (format) of mark: character mark, consisting of a word or combination of words, font or specific design for the words, etc.; design mark, a stylized design with or without letters, such as a logo; or sound mark, such as jingle or distinctive sound.

If you are looking for a trademark for a company name, your choice will likely be a character or design mark. Lots of trademarks are relegated to only the standard character set (protecting the word "bubble" in regular typeface, for example), but marks can also be customized or stylized to include pictures, logos, different letter forms or combinations. Check out this PTO resource for more information.

Remember, though, that your trademark must be unique enough to distinguish yours from other trademarks already in use. The PTO provides these categories for determining trademark eligibility, from strongest to weakest:

  • Fanciful marks are those that use terms that have been invented for the sole purpose of functioning as a trademark or service mark (Pepsi, Exxon) or are completely out of common usage. Fanciful marks are most likely to be eligible for trademark.

  • Arbitrary marks are those with common words, but not common in connection with the products or services being trademarked, (such as Apple Computers or Yahoo!). Arbitrary marks are less likely to be eligible for trademark than fanciful marks, but still likely to be accepted.

  • Suggestive marks are those that, “require imagination, thought, or perception” in reaching a conclusion about the nature of the products or services being trademarked. Suggestive marks may or may not be unique or distinctive enough to be eligible for trademark.

  • Descriptive marks are those that are “merely descriptive or deceptively misdescriptive” regarding the products or services seeking trademark. Descriptive marks will likely not be eligible for trademark.

The goods and services you associate with your mark are up to you, but make sure that they are clearly identified. You want to make sure to cover your most important goods and services, because what is NOT covered will be available for others to use.  You may not want to spend the time, energy and expense protecting a trademark in your startup phase unless it is absolutely necessary.

Decisions about what to use for your company’s mark are usually best made in consultation with a trademark attorney who understands the benefits, drawbacks and options involved.  

Step 2: Do a Trademark Search

Make sure to search the USPTO’s database to find out if someone has already registered your mark, or a mark substantially similar to yours, that may invalidate your efforts. It is advised to seek out the help of an experienced attorney when conducting your trademark search. Mistakes here are easy to make and can be expensive.

Step 3: Prepare and File your Trademark Application

Prepare and file the online application. Payment of the appropriate processing fee is also required. Fees range from $225 to $325, depending on the class of goods or services involved. Pay close attention to accuracy when filling out your application. Again, you may wish to consult with an attorney to ensure that your filing is mistake-free.

Step 4: Keep Tabs on your Application

Once your application is filed, the USPTO will assign an examiner to your application, and the review process will begin. The review process can take several months to complete since the examiner will go through (potentially) thousands of marks to determine the validity of your proposed mark.

You may be required by your examiner to make corrections to your application, answer additional questions or file additional documentation. It is therefore crucial that you keep tabs on your application and update all important contact information throughout the process. You can monitor your application’s progress by visiting the USPTO’s Trademark Status & Document Retrieval website. Failure to meet a response deadline could result in the need to reapply for your trademark.

Step 5: Receive your Trademark

If the examiner finds no basis to object to your mark, he or she will approve the trademark for publication in the “Official Gazette," a weekly publication of the USPTO. Parties who believe that the mark will infringe on their own trademark have thirty (30) days from the publication date to file an objection or apply to extend the time to oppose the trademark. If an opposition is filed, the matter will move to the USPTO’s Trademark Trial and Appeal Board (TTAB) for resolution. If no opposition is filed, or at the time that all oppositions have been resolved in the applicant’s favor, then one of two events will occur:

  • If the trademark is based on use, the USPTO will register the mark and send the applicant/owner a certificate of registration.

  • If the trademark is based on intent to use (i.e., ha not previously been used), the USPTO will issue a Notice of Allowance regarding the mark. The applicant will then have six months to use the mark and file a Statement of Use, or file an extension request. Once the “use” test is resolved, the USPTO will register the mark and send the applicant/owner a certificate of registration.

Maintaining your Company Trademark

After registration of your trademark, you must take certain steps to maintain your registration, including filing certain maintenance documents with the USPTO. You must also be careful to update with the USPTO any business owner or correspondence contact information changes.

In addition, it is critical to remember that the USPTO does not enforce your trademark rights. Enforcement of a trademark against infringement is the sole responsibility of the trademark owner. Failure to enforce your trademark may lead to its loss.

If you run into questions at any point in the trademark development or application process, just post a job through UpCounsel. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe and Twilio.