How to Trademark a Name by Boni Peluso

How to Trademark a Name

The trademark application process can be complicated, so you need to know what the United States Patent and Trademark Office is looking for when you apply.

by Boni Peluso
updated November 16, 2020 · 3 min read

Creating a unique business name is one of the most exciting parts of starting a new business. This name is a key feature of your brand, and it's smart to protect it with a registered trademark.

A registered trademark gives you exclusive rights to identify your product or service with that name, informs everyone that you are the owner of that trademark, and bars others from using it or piggybacking on your brand.

Here are some insights that will help you understand how to trademark a name, as well as what you need to know before you apply for trademark registration.

 

What Is Common Law Ownership?

As you start selling your product or service, you automatically have what's called "common law ownership" of that name without having to register it formally. However, common law rights only go so far.

One limitation of common law ownership is that your name is only protected in the geographic area where it is being used. When you register a trademark with the United States Patent and Trademark Office (USPTO), however, your trademark rights protect you nationwide. This is especially helpful if you plan to sell your products or services outside your local area.

Similarly, in the event of a court dispute over your name, common law ownership only offers limited protection. With federal trademark registration, you can file a trademark infringement lawsuit in federal court. So if you really want enhanced protection, it's a good idea to register your trademark as soon as possible.

How to File a Trademark Application

Your application must be filed with the USPTO, and it must include:

  • The name and address of the mark's owner
  • The name you want to protect
  • The goods or services that you want to register your name for
  • The basis for your filing: either use "in commerce" (if you are already using your name in business) or "intent to use" (if you haven't started using it yet)
  • A specimen such as a label or a package that shows your name in use if your filing is based on use in commerce (if you file on an intent to use basis, you will provide this later)

What Should You Expect After Filing?

Once you apply, your trademark application is assigned to a USPTO examining attorney for review. If problems are flagged, you'll receive a letter known as an Office action that will explain the issue and generally give you 6 months to respond. You must respond to Office actions within that deadline, or your application will be denied.

If your application satisfies all requirements, your trademark will be approved for publication in the USPTO's Trademark Official Gazette. This gives other people an opportunity to oppose it. If there is opposition, you may need legal assistance to prevail.

What Are the Common Reasons a Trademark Is Rejected?

To avoid delays in the trademark registration process, you need to know some key facts.

  • You can't register a trademark for non-business purposes. You can only trademark a brand name that you're using in business or that you intend to use in business in the near future.
  • You can't register a generic or descriptive name. Your trademark name has to be distinctive or unique in some way to be approved.
  • The name can't create a likelihood of confusion among consumers. This can happen when your name is too similar to another registered mark or one that's pending. When similar marks are used on related goods and services, consumers can get confused and mistakenly believe they come from the same source. That's why every trademark application must specify the type of goods or services where a trademark will be used.

Is a Trademark Name Search Necessary?

trademark search is an invaluable first step because it can prevent potential trademark problems before you even file an application or invest time and money in your business name.

The USPTO has a huge database of registered trademarks and pending applications. A basic search will uncover trademarks that match yours. The search results can alert you to a potential denial based on the likelihood of confusion with an existing trademark.

A more comprehensive search sorts through other platforms such as state trademark databases, business directories, and the internet to identify other names that are the same as—or similar to—your proposed trademark name. Doing a trademark name search can help you avoid legal and marketing troubles down the road.

What Happens Once Registration Is Complete?

If approved based on use in commerce, and you've resolved any opposition, your mark will be registered. If approved based on an intent to use the application, you would receive a Notice of Allowance, which means your mark has been allowed but won't be formally registered until you begin using it in business and file a Statement of Use and a specimen that shows your name in use.

When your registration is complete, you can begin using the registered trademark symbol, ®, next to your name. Enforcing your trademark rights is your responsibility. It's important to monitor your trademark and act promptly if you believe someone is infringing on it.

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Boni Peluso

About the Author

Boni Peluso

Boni Peluso is an award-winning Creative Director and Content Strategist who has written extensively for the legal, heal… Read more