Trademarking a Name: Everything You Need to Know
Trademarking a name can be very useful way for a company or brand to add value. There are a variety of steps required to trademark a name.
What is a trademark?
You may wish to trademark a name if you want to get the sole right to utilize designs and words that are particular to your company. Trademarks are limited to words and designs, or combinations of words and designs, that uniquely brand and identify a certain idea or brand.
Many things can be trademarked. You can trademark names, both of individuals and businesses, as well as designs and company brands and even noises.
The trademarks will protect and distinguish a business’ brand from similar phrases and designs. If someone else uses your idea or symbol, you can bring a trademark case against them, which is a very powerful legal remedy.
How to Register a Trademark for a Company Name
In order to get your trademark officially registered, you must do so with the United States Patent and Trademark Office (USPTO). You can do this through their website.
The first thing to do is to make sure that your trademark is unique and not already in use. Search through the USPTO’s trademark search database to see if your trademark is already in use. You might want to avoid attaching a domain ending to your trademark, as others might be able to use the trademarked name with just a different domain ending.
It is relatively easy to get a trademark. You can often do it on your own in just over an hour. You can get trademark rights for using the mark in a certain region where it is used, no matter if it is officially registered or not. However, if the trademark is already being used by another business, then you won’t be able to register it for yourself.
Registering the trademark normally requires a filing fee between $275 to $325. You will need to include certain details such as the kind of industry the trademark is in, when the trademark was first used in business, and if there are design specifications.
Remember that if you register a domain, the trademark is only particular to the domain ending.
If you want to make your trademark broad, then you should not include specific design details regarding your trademark.
The USPTO will inform you about if it approves of your trademark usually up to six-months after you send in your application. However, it is possible that your trademark request will be denied, particularly if it is similar to another already-registered trademark.
Even if you don’t register your trademark, you can still use a distinguish logo or phrase for your company, as long as it doesn’t infringe on another person’s trademark.
No matter if the trademark is registered, you can use the designations “TM” and “SM” to designate it is your trademark. However, registering the trademark officially will give you the full protection of federal trademark law, such as being able to bring lawsuits regarding infringement and foreign registration.
Understanding Trademark Name Restrictions
When you are trademarking something, you have to be using it for a business purpose or intend to do so quite soon. This specification means that only things relevant to business can be trademarked and not things that are used just for personal uses.
As one example, the USPTO approved Beyonce’s “Blue Ivy” request for trademark since it was going to be used as part of a business purpose, specifically as part of baby-themed products. If Beyonce only wanted to trademark the name to prevent others from using her baby’s name, the application likely would have been denied.
Furthermore, a trademark request must be for something that is unique. It cannot be something that is plain or common, whether a design or phrase. Even a name like “Blue Ivy” on its own might too plain to be trademarked. However, when a plain phrase is used in connection with products or services that are distinguishing it from its ordinary use, and it’s included as part of the trademark request, then it might be approved.
Often names that are simply created or that are very closely connected to the product, such as describing it, can be trademarked.
Furthermore, oftentimes trademarks will be rejected if the trademark request will possibly create confusion with other trademarks or applications. This usually happens if the two trademarks are similar in many ways and/or if they are used in connection to similar products, services, and industries.
When you apply for a trademark, you need to be specific about the kind of products and services you will use the trademark with. The trademark office will not allow similar trademarks in similar industries, as that raises the chance of customers becoming confused.
As an example, a Boston business also tried to trademark “Blue Ivy” for their wedding planning service. The USPTO approved both applications, largely because even though both are using the same name nonetheless they are in such separate industries that the risk of public confusion is quite low.
However, the USPTO states that it will not register the names of people or designs similar to them except under specific circumstances. To do so, often you will need to get the person to include their written consent with the application, unless it is a nickname. To get approval for the name it has to be shown that the person’s name has a unique connotation for a business-related brand and is generally publicly known.
Occasionally the name will be allowed to be trademarked when it is unique. However, the application will need a large amount of proof to show this.
Three Steps to Trademark a Name: Conduct a Trademark Name Search
The first thing to do for your trademark application is to see if your trademark is already being used or is similar to another trademark. You should look through various state databases for trademarks, company listings, and the internet overall to see if there are names being used similar to the one you want to trademark.
Even if a name is not officially trademarked, it still might have statutory or common law trademark protection in a certain region.
This search is important because if your name is later found to infringe on another person’s trademark, you may face both brand problems as well as legal problems.
Three steps to trademark a name: File an application
When you apply, you will need to include several things on your application. These include:
The trademark applicant’s name as well as address.
The name of the trademark you wish to register.
The kind of products and services that are related to the trademark you are applying for.
Why you are applying, specifically describing how you want to use the trademark in business or hope to do so in the future.
If you are already using the trademark in business, then an example of how it is currently being used. If you want to use it in the future, include an example of how it might be used.
Three steps to trademark a name: Respond to Office Actions and Oppositions
When you submit your application, it will then be sent to an examiner at the USPTO to look over. If the application has problems, the examiner will send the person applying an action letter which describes the problems and sets the time frame for remedying it. If the applicant does not respond to the letter in the time frame set forward, the application will be refused.
The trademark application will then be included in the USPTO’s gazette, available to the public. This allows others to see and criticize the application. If the application is actively criticized, you may need to get legal assistance to defend your trademark application.
If the complaints against the trademark are all settled, then the trademark normally will be approved once it has been determined to be business-related and distinguishable.
After sending in the kind of business-use you want to use the trademark for, the USPTO will give you an allowance notice. This means that the trademark has been determined to be permissible, but it is not yet registered completely with the USPTO until you send in your use statement as well as an example of how it will be used.
After finishing the registration, you can then begin using the formal trademark logo with it, designed as “®”.
It will be up to you to enforce your trademark and bring legal action against those who are using your trademarked item. Be sure to monitor your trademark closely.
Should You Trademark Your Name?
As one notable example, Morgan Freeman several years ago was able to get the trademark to “MorganFreeman.com”, which was at the time owned and used by a company called “Mighty LLC”. Morgan Freeman sent in an application to the USPTO to trademark the domain, complaining that the company was using the domain in his likeness to redirect internet traffic for their own purposes.
Eventually, international arbitrators determined that Morgan Freeman’s name was well-known and distinguishable, due to his entertainment career, and determined he had the right to the trademark in his likeness.
Because of the modern internet era, many public figures utilize trademarks to make sure their names and faces are protected, especially electronically.
As shown with Morgan Freeman’s case, trademark law can be used to protect as well as take domain names on the internet that use the trademark. Trademark registration, infringement, and enforcement changed significantly due to the internet, particularly in regard to domain names.
If you need help learning more about trademarking a name, you can post your legal need on UpCounsel’s marketplace. 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, Menlo Ventures, and Airbnb.