How to Trademark a Business Name

The following guest post was written by Dave Owens, a 2010 graduate of the University of San Francisco School of Law.

Coming up with a good name or an identifiable logo is an essential part of creating a business. Protecting that name or logo is every bit as essential. The best way to protect yourself is to register for a trademark.

What is a Trademark?

A trademark is a source identifier, meaning that it identifies the company behind the product. For instance, we know that the name Coca-Cola refers to the company that makes pop (my Midwest upbringing requires me to use pop rather than soda). Likewise, we know that a sign with a Golden Arch refers to McDonald’s.

The easy way to think about it is this: when you see a word, mark, or symbol, do you associate it with a company?

What are the Benefits of Registering a Trademark?

Although you are not required to register a trademark, it is highly suggested that you register the mark with your state and/or with the United States Patent and Trademark Office (“USPTO”). Registering a trademark proves ownership of a mark and provides others with constructive notice — they knew or should have known that someone else owned the trademark. It also provides a defense if another company later uses the mark and claims you are the one who infringed their trademark.

As well as providing evidence of ownership and giving others constructive notice, federal registration gives the trademark holder the following benefits:

  • You may bring suit in a federal court;
  • Registration can be used as a basis to obtain registration in a foreign country;
  • Registration may be filed with U.S Customs Services, which helps prevent infringing goods from being imported into the country.

Things to Know Before Registering For a Trademark

Do a Search Before Registering

Before wasting time, resources, and possible legal fees, you should do a couple searches to see if someone else is using the same or similar mark. The USPTO allows you to do a search on their website to see what marks have been registered. Many states have a similar search engine on their website. You should also do a Google search because not everyone chooses to register his or her mark.

What If Someone is Using My Mark?

Just because someone is using the same or similar mark doesn’t necessarily mean your use of the mark is an infringement. The standard for infringement is whether the use creates a likelihood of confusion (courts weigh a number of different factors to determine this). So, you might be fine if you are using the same mark as someone else, but for a completely different line of business. But, like most things in law, whether an infringement would occur is not cut and dry. If you have any trepidation, it is best to consult an attorney to evaluate the risks.

If the mark is famous, distinct, or unique, you should not use it — even if you are in a different line of business. A trademark holder can bring suit if your use is diluting their mark. Dilution basically means that one person’s use of a mark makes another’s trademark less distinctive or unique.

There are two types of dilution: blurring and tarnishment. Blurring occurs when someone’s use of another’s trademark creates the possibility that the mark will lose its ability to serve as a unique identifier (e.g., Nike Lawnmowers would likely be an example of blurring). Tarnishment occurs when someone uses another’s mark, but for an inferior or offensive product or service (e.g., Nike Sex Shop would likely be an example of tarnishment).

Has the Mark Been Used in Interstate Commerce?

To receive a federal trademark, the mark must be used in interstate commerce. Generally this means that goods affixed with the trademark must be sent across state lines. However, this is not always the case. For instance, it has been found that a single-location restaurant serving interstate travelers was able to federally register their trademark. If your business is only operating within state lines, but want to obtain federal registration, you should contact an intellectual property lawyer before proceeding.

But if your business is only operating within state lines and does not qualify for federal protection, you should considering registering your mark with the trademark office in your state. At the very least this will give you protection within your area and provide evidence of ownership. Before doing this, you should consult the trademark requirements in your state and/or contact an intellectual property attorney.

What If I Haven’t Yet Sold Anything With My Mark?

You may not want to wait until you’ve sold goods with your mark to obtain registration. If this is the case you should file an Intent to Use registration. But you must honestly want to use the mark in commerce. It can’t be an attempt to simply prevent others from using a similar mark.

The registration gives you six months to provide evidence that you are selling goods or services with the mark attached. You can file for an extension every six months five times, for a total of 36 months after you initially file the intent to use registration. Once you provide evidence of use, you will retroactively receive protection from the date you filed the intent to use registration.

Is the Name Sufficient For Trademark Protection?

The mark must be sufficiently distinctive to receive trademark protection. You will receive automatic protection (provided the mark has been used in commerce) if your mark is fanciful, suggestive, or arbitrary.

Fanciful (basically a made up word): Kodak cameras (George Eastman, the     founder of Kodak, simply created the name)

Suggestive (suggests something about product): Greyhound buses (suggests speed)

Arbitrary (name has no association with product): Apple computers (we would not ordinarily associate an apple with a computer)

If the mark is descriptive — meaning it describes the goods or service they market (e.g., Hamburger Land for a restaurant) — the trademark office will not register it without secondary meaning. This means that enough likely consumers recognize the mark as signifying a brand. Surnames are treated like descriptive marks. So, if you want to attach your last name to your business (e.g., Johnny’s Pizzeria), you will need to actually sell some goods and have a sufficient amount of success.

You will never receive protection if your name is generic. Just simply naming the product or service will not gain you protection (e.g., you can’t get a trademark for calling a pizza business Pizzeria). To do so would be unfair and burdensome to other business owners who want to go into the same area of business.

How Do You Register For a Trademark?

Surprisingly, our government system is pretty efficient. You can register your trademark online on the USPTO website for $325.00 (cost may vary depending on what you are filing for). But, as you can see, trademark issues can become very complicated. Although hiring an attorney at the outset can be more expensive than you would like, it could also save you a lot of money in the long run.

Dave Owens is a 2010 graduate of the University of San Francisco School of Law who recently passed the California Bar Exam.  He can be reached at dao1282@gmail.com.

Photo Credit: Flickr/Aaron Gufstafson

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