Should I Trademark My Business Name?

Should I Trademark My Business Name?

by Jane Haskins, Esq., February 2016

Your business name is one of your company’s most important assets. It’s a symbol for your reputation, and it’s how you’re known to the outside world. If a competitor starts using your name, you’re not likely to be happy about it.

But what if you trademark your business name? Will that prevent other businesses from using it?

The answer is that a registered trademark gives you the exclusive right to use your business name nationwide in connection with the goods and services you’ve identified in your registration, and allows you to enforce your trademark by filing a lawsuit in federal court. Those are strong protections, but it will be up to you to monitor unauthorized uses of your name and take steps to stop them.

Whether you should register a trademark for your business name depends on the geographic scope of your business, the type of name you have and whether you have the time and money to file a trademark application.

What Is a Trademark?

A trademark identifies the source of goods or services. Business names, product names, logos and labels can all be trademarks. You acquire a trademark by using your mark in commerce—in other words, using it when you conduct your business. For additional protection, you can register a trademark with the U.S. Patent and Trademark Office (USPTO).

Advantages of Trademarking a Business Name

If you use your trademark but don’t register it with the USPTO, you have common law trademark protection. You may be able to stop other people from using your mark, but only in your immediate geographic area. That may be good enough for a small local business, but may not be much help if you have an Internet-based business with nationwide scope.

If you register a trademark, you gain several advantages:

  • Nationwide trademark protection
  • Your trademark ownership becomes part of the USPTO’s database, creating a public record of your ownership and the date you began using the trademark
  • People who conduct a trademark search will see your trademark and may be less likely to use it
  • You can file a lawsuit in federal court to enforce your trademark
  • Registration creates a legal presumption that you own the trademark and can use it for the goods and services listed in your trademark application. This is helpful if you ever need to sue someone to enforce your trademark
  • U.S. registration may allow you to register your trademark in other countries
  • Registration gives you the right to use the registered trademark symbol, ®

The numerous advantages of trademark registration have led to millions of trademarks being registered with the USPTO.

However, not all business names are eligible for trademark registration.

What Kinds of Names Can Be Trademarked?

The USPTO will only register business name trademarks if they are distinctive and not likely to be confused with an existing trademark.

The more distinctive the name is, the easier it is to trademark.

  • “Coined” or made-up names like “Xerox” are the easiest to trademark and receive the strongest protection. Names that use existing words in unique ways—such as “Apple” computers—also make strong trademarks.
  • Names that suggest a product without describing it can also be trademarked. Examples are ‘Greyhound” bus and “Goo Gone.”
  • Descriptive business names are the hardest to trademark. These include personal names, such as Ben & Jerry’s ice cream; location names, such as “Chicago Pizza;” and names that describe a product or service, such as “Best Carpet Cleaning.” The USPTO won’t register a trademark for a descriptive name unless you can also show that the name has been used so much that people automatically associate it with your product or service.

The USPTO may also deny your registration if your business name is confusingly similar to an existing trademark. A confusingly similar name sounds like the name of another business that offers similar products or services, so that people might think they are related. For example, Omega Hair Salon and O-Mayga Beauty Shop might be confusingly similar because the names sound alike and both businesses offer beauty services. But Omega Car Wash would probably not cause a likelihood of confusion because no one expects the same company to offer both hair care and car washes.

How to Trademark a Business Name

Before attempting to register a trademark with the USPTO, you should conduct a trademark search using a trademark search service or the USPTO’s Trademark Electronic Search System to determine whether anyone else has registered a similar trademark for a similar type of goods or services.

If you conclude that your name is eligible for trademark registration, you can apply to register your trademark online. If you register your name as a standard character mark, your trademark business name will cover your name displayed in any font, color or design you choose. You can also register your name as a special character mark that depicts your name in a particular color, font or design—but your trademark will extend only to the exact design you submit.

Other Ways to Protect Your Business Name

What if you can’t, or don’t want to, trademark a name? Your business name may still have some valuable protections within your state.

If you form a business entity such as a corporation or limited liability company, your state will not allow another business entity to be formed with the same name. If you do not form a business entity, you may still receive this protection by registering a trade name or “DBA” with your state.

If your business name is eligible for trademark protection, federal trademark registration is a fairly easy process that gives you the right to enforce your trademark nationwide and can help deter others from using your name. Registering is an especially good idea if your business operates in more than one state and you’re concerned that competitors will try to use your name.

Registering a trademark on your own can be a complex and confusing process. LegalZoom’s 3-step tradmark application process makes it easy—plus you can get legal advice from an independent attorney if you need it. If you're ready to start a business, LegalZoom can help you through the process. Begin by choosing the business structure that is right for your business. Once you answer a few questions, we'll assemble your documents and file them directly with the Secretary of State. It's that simple.