How to Trademark a Name
How to Trademark a Name
To trademark a name, you must be using it or planning to use it for business. The name must be distinctive—made-up ("Microsoft") or used in a way unrelated to its ordinary meaning ("Apple" computers). To register your trademark, you must first search existing trademarks to be sure your trademark won't be confused with others, then file a trademark application, and respond to any official actions and oppositions.
An Example That Says It All
When their daughter Blue Ivy Carter was born in 2012, Beyoncé and Jay-Z filed a trademark application for the infant's name. Their application said that they planned to use the name on a line of baby products. This sort of entrepreneurial foresight isn't on most people's minds when their child is born. But it was on their's—and they got their trademark. So can you trademark a person's name? What about a business name?
Understanding Trademark Name Restrictions
Trademarks give you an exclusive right to use certain words, phrases, symbols, or designs to identify your business. Therefore, to trademark a name, you must be using it “in commerce," or you must intend to use it in the near future. In other words, you can trademark a business name, but not a name that you only use for personal purposes.
Beyoncé's Blue Ivy trademark was allowed by the United States Patent and Trademark Office (USPTO) because the application said she intended to use the name on baby-related products. She could not register a trademark simply to prevent other people from using the name.
To get trademark protection, the name also must be distinctive. A generic or descriptive name—such as “Hot Coffee," “Cincinnati Chili," or just “Bob"—is unlikely to qualify for a trademark. When used as a plant name, “Blue Ivy" is a descriptive mark that might be ineligible for trademark protection. But when “Blue Ivy" is used on a product unrelated to its ordinary meaning, it becomes a strong trademark, similar to Apple for computers.
Other types of names that make strong trademarks are made-up names like “Microsoft," or suggestive names that describe a product's qualities without naming it, such as “Easy-Off" for an oven cleaner.
Finally, many trademark applications are refused because there is a “likelihood of confusion" with another registered mark or pending registration application. There is a likelihood of confusion if:
- Two marks are similar, AND
- They are used on related goods and services.
Every trademark application must specify the type of goods or services that the trademark will be used on. When similar marks are used on related goods or services, consumers are likely to mistakenly assume that they come from the same source.
In addition to Beyoncé's trademark application, a Boston wedding planner filed an application to register the name “Blue Ivy" for wedding and event planning services. The USPTO approved that application and also gave preliminary approval to Beyoncé. Although both applications seek to trademark the same name—Blue Ivy—a wedding planner isn't likely to be confused with a baby product brand.
How Do You Trademark a Name?
Knowing how to trademark a name is important to your business. Trademarking a name is a three-step process that involves conducting a trademark search, filing an application with the USPTO, and responding promptly to any issues that arise.
Step 1: Conduct a Trademark Name Search
A trademark search helps you spot potential trademark problems BEFORE you file a trademark application or invest time and money in your business name.
A basic search queries the USPTO database for trademarks and pending applications that match your business name. The search results can alert you to the possibility that your trademark application will be denied based on the likelihood of confusion with an existing trademark.
A more comprehensive search will also search state trademark databases, business directories, and the internet generally to identify other names that are the same as or similar to your proposed business name. These names may not be registered trademarks, but they may have state or common law trademark protection in their geographic area. Your name might infringe on these trademarks, causing you legal and marketing troubles down the road.
Step 2: File an Application
To trademark names, you must file an application with the USPTO. You can apply online using their Trademark Electronic Application System. Your application must include:
- The name and address of the mark's owner
- The name you want to protect
- The goods or services for which you want to register your name
- 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)
- If your filing is based on use in commerce, a specimen such as a label or package that shows your name in use; if you file on an intent to use basis, you will provide this later.
Your trademarking application must be accompanied by a filing fee, which is $225-$325 per class of goods or services as of 2016.
Step 3: Respond to Office Actions and Oppositions
Your trademark application will be assigned to a USPTO examining attorney for review. If there are problems, you will receive a letter known as an Office Action that will explain the issue and give you a certain amount of time to respond. You must respond to Office Actions within the deadline or your application will be denied.
Next, notice of your application will be published in the online Official Gazette, and other people will have an opportunity to oppose it. If there is opposition, you may need legal help to resolve it.
Once any opposition has been resolved, your mark will be registered if you filed on the basis of use in commerce. If you filed based on intent to use (as Beyoncé did), you will receive a Notice of Allowance. This means your mark has been allowed but will not be formally registered until you begin using it and file a Statement of Use and a specimen.
When the registration is complete, you may begin using the registered trademark symbol, ®, next to your name. Enforcing your trademark rights is up to you, so it's important to monitor your trademark and act promptly if you believe someone is infringing it.
Ready to register a trademark? LegalZoom can help. Complete a simple questionnaire to get started. We'll work with you to assemble your application, and will conduct a trademark search to reveal any potential conflicts. We'll then file your completed application with the U.S. Patent and Trademark Office (USPTO).