How to Trademark a Name
Trademarks are the unsung heroes of the business world. They might not be flashy or in the spotlight, but they play a crucial role in protecting your brand and identity. Imagine if you could trademark a name, giving it legal protection and a competitive edge.
In this comprehensive guide, we’ll delve into the world of trademarks, exploring the process, the differences between state and federal trademarks, and the importance of a strong mark.
So, whether you’re a budding entrepreneur or an established business owner, read on to discover how to trademark a name and safeguard your brand.
What is a Trademark?
Before we dive into the nitty-gritty of how to trademark a name, let’s start with the basics. A trademark “can be any word, phrase, symbol, design, or combination thereof that identifies your goods or services.” It’s the essence of your brand, how customers recognize you in the marketplace, and what sets you apart from your competitors. It’s like your business’s unique signature.
A crucial distinction to make is that the term ‘trademark’ encompasses both trademarks and service marks. A trademark is used for goods, while a service mark is used for services. In essence, a trademark:
“Identifies the source of your goods or services
Provides legal protection for your brand
Helps guard against counterfeiting and fraud”
One common misunderstanding is that to trademark a name gives you full control over a specific word or phrase, allowing you to stop anyone from using it everywhere. But in truth, your trademark rights are restricted to how that word or phrase is applied within your specific goods or services. You’re not the outright owner of the word or phrase; rather, you have exclusive rights to its use in connection with your business.
Trademark a Name: Owning vs. Registered
Now that we’ve grasped the essence of a trademark, let’s understand the distinction between owning a trademark and having a registered one.
You actually become a trademark owner the moment you begin using your trademark with your products or services. But here’s the catch – these rights are limited to the specific region where you’re offering your goods or services. So, if you’re aiming for stronger, nationwide protection, it might be a smart move to trademark a name with the United States Patent and Trademark Office (USPTO).
Registering your trademark isn’t a must-do, but it actually brings some pretty cool perks. You get more rights and protection compared to just leaving your trademark unregistered. So, let’s dive into the world of trademark registration and see what’s up!
Trademark a Name: State or Federal?
Before you embark on the journey of trademark registration, you must decide between state and federal protection. Let’s explore the key distinctions:
State Trademark Registration
Getting your trademark registered in your home state only covers you within that state’s borders. So, if you’re thinking about taking your business to new states, your trademark won’t have any legal protection in those places unless you go through the registration process in each of them. To ensure your brand is safeguarded as your business expands, it could be a smart move to think about federal registration.
Federal Trademark Registration
Getting your trademark registered with the USPTO comes with some great perks. First off, it grants you rights all over the United States and its territories. Plus, it gets your trademark listed in the USPTO’s public database of registered trademarks. With that federal registration in your pocket, you can confidently slap that ® symbol on your brand and count on those rights as you grow your business across state borders.
Benefits of federal trademark registration include:
– Your trademark is featured in the USPTO database, serving as public notice for those seeking similar trademarks. It displays your trademark, associated goods and services, application date, and registration date.
– Your registration certificate establishes a legal presumption of ownership, simplifying federal court cases by eliminating the need for extensive evidence.
– You can use your registration as a foundation for seeking trademark protection in foreign countries.
– You have the right to initiate a federal court lawsuit regarding your trademark.
– Display the federal trademark registration symbol (®) with your trademark to signal USPTO registration, potentially deterring others from using a similar mark.
– Register your trademark with U.S. Customs and Border Protection (CBP) to enable them to halt the importation of goods bearing infringing trademarks.
Now that we’ve explored the types of trademark protection let’s delve into what makes a trademark strong and why it matters.
The Power of a Strong Trademark
When it comes to trademarking a name, strength matters. A strong trademark is “inherently distinctive,” swiftly and clearly identifying your goods or services as uniquely yours. The stronger your trademark, the easier it is to prevent others from using it without your permission. Weak trademarks, on the other hand, lack the same legal protections.
Strong trademarks fall into three categories: fanciful, arbitrary, and suggestive. Let’s break them down:
Fanciful trademarks are invented words, possessing meaning only in relation to their goods or services. For instance, “Clorox” for cleaning products or “Google” for a search engine are fanciful trademarks that convey no inherent meaning before their introduction.
Arbitrary trademarks are real words that hold no association with the underlying goods or services. A classic example is “Coach” for luxury handbags & accessories – a common word transformed into a unique trademark.
Suggestive trademarks hint at a quality of the goods or services without stating it outright. Consider “Jaguar” for luxury cars. This trademark suggests automobiles that are fast and sleek, like their namesake, without explicitly saying so.
Weak trademarks, in contrast, are challenging to protect against competitors and often cannot be federally registered. They include descriptive and generic trademarks.
Descriptive trademarks describe some aspect of your goods or services without distinguishing the source. These marks are only registrable under specific circumstances, such as gaining distinctiveness through extensive use in commerce over many years. “Examples include ‘Creamy’ for yogurt or ‘Apple Pie’ for potpourri.”
The key difference between descriptive and suggestive trademarks is that descriptive ones immediately convey what the goods or services are, while suggestive ones only allude to them. “For instance, ‘Bronzer’ for suntan oil would be considered descriptive, while ‘Coppertone’ is a suggestive, registered trademark for sun-tanning products.”
Generic trademarks are not even trademarks; they are the common, everyday names for goods or services. They do not indicate the source and cannot function as trademarks. Some examples include “Shoe Shop” for retail shoe services or “Jewelry” for a line of jewelry.
Another aspect to consider when selecting a trademark is how easily the public will remember, pronounce, and spell it. Additionally, if you plan to expand globally, consider whether your trademark has a different meaning when translated into foreign languages, especially if the translated word could be deemed offensive.
Before You Trademark a Name, a Comprehensive Search is a Must
One of the most common reasons trademark applications face rejection is due to the applied-for trademark being too similar to an already registered one, leading to a likelihood of confusion. This means that customers might believe your goods or services come from the same source as another party’s, causing problems. So, before you trademark a name, embark on thorough research to see if someone else has already registered a similar trademark.
A comprehensive trademark search involves a thorough investigation of pending and registered Federal trademarks, State trademarks, and Common-Law databases. Common-Law rights are rights that stem solely from the use of the trademark in commerce within a specific geographic area. These rights can be strong if the other party’s common law use predates your registration. Imagine you want to open a motion picture production studio and the name you want is already in use in Los Angeles, California and has Common-Law rights for all of California. How impossible would it be to have a movie studio that you can’t use in the movie capital of the world?!?
The Federal Trademark Application Process
Section 1(a) - In Use in Commerce
- Preparation: Gather all necessary information and documentation.
- Filing: Submit your application and fees online through the USPTO’s Trademark Electronic Application System (TEAS).
- Initial Review: The USPTO reviews your application to ensure it meets the requirements.
- Publication: If approved, your trademark is published for opposition in the Official Gazette, giving others a chance to oppose it.
- Registration: If no opposition arises, or any opposition is resolved in your favor, your trademark is registered.
For the full timeline, read our post about Use in Commerce trademarks.
Section 1(b) - Intent to Use
- Preparation: Gather all necessary information and documentation.
- Filing: Submit your application and fees online through TEAS.
- Initial Review: The USPTO reviews your application for completeness.
- Notice of Allowance: Once your application is approved, you receive a Notice of Allowance.
- Statement of Use: Within six months, you must submit a Statement of Use proving you’ve started using the trademark in commerce.
- Registration: If everything checks out, your trademark is registered.
For the full timeline, read our post about Intent to Use trademarks.
It’s important to note that your trademark registration can potentially last forever. However, you must continue to use it in commerce and file maintenance documents with fees at prescribed intervals. For instance, a maintenance document is required after your trademark has been registered for five years. Failure to maintain your registration will result in its loss, and you’ll need to start the application process anew.
To trademark a name is a vital step in protecting your brand and distinguishing yourself in the marketplace. Understanding the nuances of trademark law, the difference between strong and weak trademarks, and the application process empowers you to safeguard your business’s identity effectively.
Remember, a strong trademark is your best ally. It not only sets you apart but also makes it easier to protect your brand from imitators. So, when selecting a name for your business or product, choose wisely, and ensure it stands out in a crowded marketplace.
In the dynamic world of business, a trademark isn’t just a name; it’s your brand’s identity, reputation, and the key to your success. So, go ahead, trademark that name, and secure your place in the competitive landscape!