(IMPORTANT DISCLAIMER: While this post contains guidance regarding trade names, trademarks, service marks, and the associated registrations, we are NOT attorneys and cannot give you legal advice. While we believe everything recapped herein is accurate at the time of this posting, it is possible that some of the information we’ve provided is dated or incomplete. We strongly encourage you to engage a trademark attorney if you have any questions and to help you through the trademark registration process.)
After hours of brainstorming catchy business names, you’ve found the one. You’ve successfully filed it as your company name and can’t wait to wow customers with quality goods and services. You envision bountiful sales and enormous profits. The future is bright!
…Or is it?
What if someone steals your brand name along with the customers you’ve worked so hard to gain? Your future could crumble right before your eyes.
Simply registering your business name with the secretary of state’s office isn’t enough if you’re also going to use it as your brand name.
Federal trademark registration is the best way to protect your brand from being dragged under the mud with unfair competition, legal trouble, and lost credibility.
What a Trademark Can Do for Your Business: A Case Study
When Amicus Mutual Insurance Company approached us in 2005, they needed a name change—quick. A competitor was threatening legal action for trademark infringement, plus Amicus wanted to revamp their company image and win back customers.
We helped them come up with a new business name, StoneTrust Commercial Insurance Company, and start the trademark registration process so that:
- They secured their brand and prevented others from infringing on its uniqueness or profiting off of its popularity
- Their customers could distinguish them from competitors, hence creating and maintaining brand loyalty
- They were protected by trademark laws against legal action for infringement and unfair competition lawsuits
- They could prove ownership, increasing their value with potential investors
Finding the right business name and trademarking it has helped StoneTrust grow and prosper. If you want to set up your business for success, finding the right name and registering it as a trademark should be a priority.
The Six-Step Trademark Application Process
The trademark registration process may seem tedious—especially for a new business owner.
Yet, with the right direction, it is less onerous and can often be completed under six months.
The United States Patent and Trademark Office (USPTO) handles trademark registration at the federal level. It has outlined procedures to make your application seamless and increase your chances of success.
The steps include:
- Find a suitable mark
- Check for availability of the mark
- File trademark application form
- Track your application status
- Receive approval or rejection letter
- Maintain your trademark
Find a Suitable Mark
The first step is choosing your desired mark.
Is it a specific word, slogan, or a distinct word combination with a unique font or design?
If you’re having trouble finding the right name or slogan, try to brainstorm some ideas by looking at your company’s vision statement, goals for the future, goods or services that it offers to customers.
Alternatively, get help from professional naming services, like NameStormers. See how we helped Carmax develop a short, sweet, and memorable name that has set them apart as the best car sellers to date.
Check for Availability of the Mark
You’ve found the perfect name, but is it up for grabs, or did someone else beat you to registering it?
The easiest place to start your search is the USPTO’s Trademark Electronic Search System (TESS). This resourceful database contains over 30 years of registered, approved, and abandoned trademarks.
If you don’t find your mark in TESS, cast your net wider and search other sources like the internet.
Remember: You don’t want to file the paperwork, pay for registration and legal fees, and spend time only for the USPTO to reject your application because of a conflict with an existing trademark.
Listen to this podcast for tips on how to get a strong, unique mark right from the very beginning:
File Trademark Application Form
Your mark is in the clear and it’s time to stake your claim by submitting an online application.
The application must include:
- Company information, including the name and address
- The name you want to trademark
- A list of the specific goods or services the name covers
- The proper filing basis—the legal reason for applying for the trademark either;
- Use in commerce if you’re already using it; provide a copy of the mark in use
- Intent-to-use if you plan to use it in the not-to-distant future
- Payment of application fees
- $250 for Plus— if you have all the required information in the application form and your class of goods or services is available in the Trademark ID Manual
- $350 for Standard— if your application form is incomplete and you’re trademarking a special class of products or services not listed in the manual
Note: The application fee is non-refundable even if your application is rejected.
Track Your Application Status
Once you submit the application form, the USPTO will review your trademark and assign an examiner to look over it.
While this may take a while (especially when many applications are waiting in line), you should typically get an initial indication within six months from the filing date.
You’ll need to keep tabs on your application as the examiner may require you to provide additional information within a certain deadline. If you miss the deadlines, you may have to start the application process afresh.
Receive Approval or Rejection Letter
The examining attorney reviews your patent and either approves or rejects it.
If your application is approved:
- The USPTO publishes your trademark name in the Official Gazette
- Anybody who wants to object has 30 days from publication to do so
- In case an objection is raised, you may need to adjust the scope of usage in your application and/or the Trademark Trial and Appeal Board (TTAB) may hear the case
If there’s no opposition, the USPTO will either issue you with:
- A certificate of registration for commerce marks
- A notice of allowance for intent-to-use marks—with a six months notice to have used it or filed for an extension
Maintain Your Trademark
You’ve successfully registered your trademark and the coveted ® symbol crowns your business name. Breathe easy but don’t let your guard down.
Your trademark can last indefinitely but you’ll need to renew it after every 10 years. In addition, you’ll be required to file maintenance documents to prove that you’re still using the registered mark during the first decade.
Most importantly, the USPTO only registers your trademark. It neither scouts for infringement nor offers legal advice.
It’s your job to stop a business entity from using an identical or similar mark and taking legal steps to enforce trademark protection.
Frequently Asked Questions
What is the Difference Between a Trade name, Trademark, and Service Mark?
|Function||The name under which a company chooses to do business||A word, name, design, logo, or slogan that distinguishes your goods and products from others||A word, name, design, logo, or slogan that differentiates your services from competitors|
|Legality||Provides minimal legal protection||Offers more legal protection||Offers more legal protection|
|Recognition||Commonly referred to as “doing business as” DBA, assumed name, or fictitious name||May use the ™ symbol until registered, then can switch to ®||May use the “SM” symbol until registered, then can switch to ®|
Note that the TM and SM symbols signify that you are using the name as a trademark but don’t afford you the same legal protection as a legally registered trademark, hence the need to go through the formal registration process with the USPTO.
Do I Need a Trademark if My Business Name is Registered With the State?
Yes, you do.
Once you register your business name with the state as a limited liability company, corporation, or any other business entity, you gain common law trademark protection.
These common law rights prevent other businesses from using your name but only in your immediate geographic area. It also doesn’t necessarily provide you with any trademark rights if someone else has already registered your name as a federal trademark, even if they are not yet using it in your geographic area.
If your business operates in several states or other countries, you’ll need to register a trademark ideally with the United States Patent and Trademark Office (USPTO) for exclusive rights to the name in the US for your line of goods and services. You’ll also need to do the same with the USPTO equivalent in other countries that you will be operating.
A federal trademark often gives you an upper hand in case you need to sue for infringement.
Do I Need an Attorney When Registering for a Trademark?
Yes, if your company headquarters isn’t located in the US, a US-licensed lawyer must represent you.
Not necessarily if you and your company’s permanent residence is in the US (although we still think it is worth the extra money to engage a good one).
Why Would the USPTO Reject My Trademark Application?
Your mark may be rejected because of several reasons with the most common being:
A weak business name that’s:
- Too similar to another registered trademark, and that may confuse consumers to believe they are from the same source
- Too generic—e.g. commonly used descriptive terms such as creamy yogurt
- Deceptive—e.g. mahogany furniture, yet they aren’t made from mahogany wood
- A surname
- A geographical location that’s deceptive or misrepresents the product and influences consumers’ buying decision, e.g. Russian Spirit for locally manufactured spirit
- A person’s name, portrait, or signature, without their consent
Pro tip: Choose strong trademarks with fanciful and arbitrary names to increase your chances of successful registration.
Let NameStormers Help You Trademark Your Business Name
At NameStormers, we’re an award-winning company naming agency that’s helped companies like yours come up with game-changing names to build unshakable brands for over 30 years.
Here are some awards we’ve bagged for doing what we love:
Our secret for a successful portfolio?
We don’t just come up with a lovable name, do the preliminary trademark screenings for you, and hope for success.
No. We go an extra mile with our rigorous seven-step name development process where we:
- Gather information about your company, target audience, and competitors, and what your name will do for you
- Create memorable and catchy business names options for you
- Conduct preliminary trademark, common law, and internet usage of every name to help ensure they’re unique and viable
- Pitch multiple rounds of names to you for your consideration
- Use your feedback and also conduct a customer validation study to help us tweak the names
- Test the names with a bigger sample of your target audience to check for memorability and likelihood of confusion with competitors
- Present strong name options together with all our name testing research to help you choose the one that is best for you
Our reviews prove customers like our creative, transparent, and cooperative naming process:
Ready to create a fresh and memorable business name that will ace the trademark registration test?
Contact us and let’s name something.