Should I Trademark My Business Name?

If you're starting a business, having a unique name and brand helps ensure you stand out from the crowd. As a result, you may want to trademark your business name. Why? Because you want to ensure you protect yourself legally to prevent others from profiting off your business name or creating confusion in the marketplace.

A trademark is any word, phrase, or logo that identifies the business providing specific goods or services. But is trademark use always necessary for large and small businesses? Do you need to be well-versed in trademark law to file an application for a trademark? Let's discuss the basics of trademarks and when businesses should seek to get one.

What is the difference between a trademark and a business name?

The first step to take when starting a business is ensuring that your business name belongs to you. However, there is a big difference between naming your business and getting a trademark for your business. Both are an important part of establishing your company brand and setting it apart from competitors. The business name refers to the official name of the company, often declared with the state where you open your business. A trademark offers legal protection to a company or brand. While business law does make a distinct difference between a business name and a trademark, it is important for company leadership to ensure that their business name is not too close to an already registered trademark, as this can lead to a potential lawsuit.

Key points:

• A company's business name and a trademark are two different entities from a legal perspective.
• A business name is determined at the start of opening the business with the state.
• A trademark gives a brand connected to a business name legal protection.

Is a trademark different from an LLC name?

Your business name can also be referred to as your official limited liability company (LLC) name. This is the name used when the business was started with the state. The LLC name is a separate entity from the trademark name. The company's trademark is a legal protection given to a company or brand. Note that registering business names is an important first step in branding a company; however, registering a business does not provide unlimited brand names or legal protection if others try to use the name for their own business.

How do I register my business or LLC name?

The process of registering a name varies by state. If you are looking for specific instructions on how to register your business or LLC, you can turn to the Small Business Administration (SBA) for reliable information. The SBA provides a search function that gives up-to-date information on business or LLC name requirements for each state.

The process of registering with the state is designed to ensure payment of state and federal taxes rather than provide any protection against unauthorized use of your brand name. In fact, simply registering your business or LLC name does not prevent others from using the same name. This is why it is possible to find several businesses under the same name in one state. While registering your business or LLC name does not provide protection in the way that a trademark can, you should still put care into choosing the name.

What is a trademark business name?

Once you've established that your business exists within your state, you may be interested in moving forward with the trademark process so that your brand be legally protected. While naming your business or LLC is done at the state level, the trademark is registered at the national level.

A trademark can be used to solidify your brand identity and establish brand recognition in your industry. A trademark can be associated with your business name or LLC and can be used as a way to provide legal protection to other entities associated with your business, such as DBAs, logos, symbols, and company slogans. For example, you may find trademarks used in any of your favorite fast food restaurants like McDonald's or sports franchises like the NBA. The trademarks are recognized as a symbol and the registered mark "®."

Registering your business with a trademark has several benefits.

• Your trademark is listed in the United States Patent and Trademark Office (USPTO) database of registered and pending trademarks. This is an official notice to the public and those searching for similar trademarks. What they will see in the database is your exclusive trademark, all products and services provided associated with your federal registration, the date of application, and the date the trademark was registered.
• Once a trademark is registered, the business is guaranteed the exclusive rights of the trademark and ensures that the trademark is not already being used by another business entity. Your certificate of federal registration eliminates the need for overwhelming evidence in the case of a lawsuit.
• Registered trademarks offer your business government-level protection from another business from using your trademark in any way.
• The U.S. trademark registration can be used to file for trademark protection in foreign countries.
• It allows the use of the federal trademark registration symbol, ®, along with the trademark to prove that the registration is official. This acts as a deterrent to others who may want to use a trademark that is similar to yours.
• Finally, registered trademarks provide your business with legal liability protection against another business entity claiming that you are infringing on a previously registered trademark.

Can I register through a trademark electronic application system?

Trademark registration is done through the United States Patent and Trademark Office and can be completed by an individual within your business. As of February 2020, almost all trademark submissions must be submitted through an electronic application system.

You can also choose to hire an intellectual property lawyer to handle the trademark registration process on your behalf. Obtaining the support of an intellectual property lawyer to manage the trademark registration process provides added assurance that the application is filed properly and that a thorough investigation has been done to verify that the trademark you are seeking has not been registered by another business entity.

It should be known that many intellectual property lawyers will register a trademark at the state level on top of completing the federal trademark registration requirements, even though most states recognize the guidelines of the Lanham Act, or the Trademark Act of 1946, which details current federal trademark requirements.

How do I navigate the trademark office for trademark registration?

The application for a business trademark is fairly quick, however the entire process can linger on for several months. The trademark application process only has four simple steps. Filing fees for the trademark application start at around $250. However, there are some added costs related to hiring a lawyer that can make the process much more expensive.

A few other things to keep in mind are that the trademark application process requires that the applicant business take time for research. Remember that just going through the process does not guarantee success. There is a lengthy review process. If your application is denied, there is no refund.

Does my business need a trademark?

The use of the name used to register your business with the state can provide some trademark protection, but only if the business can provide documentation that it was the first in its industry to use the name. This generally only extends to the local geographic area in which the business is located. A potential trademark owner should also consider that filing a federal trademark infringement suit only applies when someone steals or misuses the name of a business that already has a registered trademark.

Registering the trademark ensures that the business owner is entitled to exclusive rights to the business name associated with the class of goods or services. Filing a trademark also allows the potential trademark owner of the business to file a lawsuit in federal court to enforce the trademark. A trademark can also be shared with the U.S. Customs and Border Protection database to prevent the potential importation of goods and services into the U.S. that will infringe upon your registered trademark.

How do I search for existing trademarks?

The U.S. Patent and Trademark Office uses a database called the Trademark Electronic Search System, or TESS, as its repository for existing trademarks. This network can be used before applying for a trademark because the USPTO is not likely to approve a trademark that can be easily confused with another existing trademark.

It is recommended that you, as the business owner, not only search for the exact name of your business but also similar names because any other name that is slightly similar will lead to a rejection. For example, "Feel Good Massage and Spa" is very similar to "Feeling Good Massage and Spa" and may likely be rejected.

How do I prepare an application for a business trademark?

An application for a business trademark requires a significant amount of research and paperwork. The application must be completed as much as possible in addition to ensuring that a name, slogan, or symbol is not already taken. Those who are applying from outside the U.S. must hire a lawyer to complete the process.

You must provide the following information to apply for a business trademark:

• Name, address, and personal information of an individual or business.
• The name that is being used for the business that will be trademarked. You can be specific as to the color, style, or font you want to use. However, the trademark will only hold for that depiction of the business name.
• List of products and/or services the trademark name will protect along with the class. It is possible to register a trademark in several classes, however requires payment of additional fees. You can find your appropriate class online using the USPTO's Trademark master list.

A fee will be applied to your application based on your status and the number of classes being registered. Finally, the application will be ready to be signed and dated.

How do I file my application for a business trademark?

Once you are ready to file your application for a business trademark, you will find that there are two filing options: the Trademark Electronic Application System (TEAS) or TEAS Plus. If you are seeking a more affordable filing option, then TEAS Plus may be the best choice for your business. However, there are certain rules to be eligible to apply for this option. To use TEAS Plus, the applicant must use the standard description listed in the Trademark ID master list. If you decide to use your own description, the standard TEAS application must be used.

Once the application has been filed, the applicant is given a filing receipt with a unique serial number as proof of completion. The application is then sent to a government patent attorney for review. If there are problems with your application, the applicant will be notified via letter. In most cases, the applicant has six months to respond to any problems in the application before it expires.

Once the application is approved, the USPTO publishes the trademark in an online journal to offer an opportunity for others to dispute it. This process generally takes about three months. If no one disputes the trademark, then the application is approved, and the trademark is officially registered. If someone cares to dispute the trademark, then the applicant will have to hire a trademark attorney to defend the trademark in court.

How does a business applicant determine what class description to use on their application?

Every trademark application includes an area for the applicant to describe the goods and services provided. The description is a minimum of two words but no more than a sentence. Here are some tips to keep in mind if you choose to write your own description of goods and services:

• Ensure that the description is wide enough so that all bases of the business are covered.
• Do not include an open-ended list of products and services using phrases like "such as," or "including."
• Do not repeat the name of the class in the description.
• Do not use terms that fall into multiple categories.
• Use plain language that is easily understood by most people.
• Remember to pay attention to punctuation and grammar.

What are the limitations of a business trademark?

There are some limitations of a business trademark and its connection to the USPTO. While the USPTO registers trademarks, it cannot do the work of enforcement. Patent enforcement can only be done by the trademark owner. This requires the business owner to do their due diligence to ensure that others are not purposely committing a trademark infringement.

Every business owner who wants a trademark for their brand must understand that it only protects them in the U.S. Your trademark expires in 10 years and must be renewed to continue protection. Trademarking your business does not exclude the business from being registered with the state. The process of paying federal taxes is separate from the trademark process. Finally, a trademark only protects your business for the classes of goods and services for which you applied. If you desire to widen your business opportunities into other goods and services, you must file another application.

How is a trademark different from a copyright, LLC, DBA, or business license?

A trademark serves an entirely different function from other business-related filings like a copyright, LLC, DBA, or business license. Copyright helps to protect original artistic and literary work. A copyright may be used to protect logos, however they do not apply to the name of a business. An LLC is a type of business that is declared at the state level at the inception of the business. An LLC usually protects your business from being used by other businesses that are incorporated within your state. A DBA, short for "doing business as," is used as a fictitious name that references your business. A DBA does not provide any protection against others in your industry from using the same name.

What do I need to know about trademark classes and trademark registration fees?

Before deciding upon what class your business falls under, it's important to know if you provide a good or service. A good refers to physical items like t-shirts, coffee mugs, dog cages, or yoga mats. A service refers to an action or activity like legal services, marketing, or wellness services.

If your business name is associated with more than one type of good or service, then it may be necessary to register your trademark in more than one class. There is an additional fee for each trademark class associated with your business name.

For example, if a massage and spa services company wanted to register its business name in the health and beauty services but also wanted to register for the production of spa bath robes under the same name, it would require an additional class listing under clothing and footwear.

It is important to note that a registered trademark can only protect a business name in the class it is registered in. It is still possible for another company to use that name under a different class.

Here are some tips for choosing the right class for your business trademark name:

• Determine if your company is selling a good or service.
• Choosing the wrong class can lead to the USPTO rejecting your application.
• Selection of your class should be determined by the final product to the consumer and not the work that goes into creating the product or service.
• Forget about the packaging. If your product is sold in a paper bag, it does not mean that you are selling paper products to your customers.
• Filing under more than one class can protect your business far into the future.

What makes a good trademark name?

It is often suggested that the best business trademark names are the ones that use words that are not necessarily descriptive of the goods or services that the company offers. Fictitious words like Google or Amazon cannot be taken out of context and often make the strongest trademark name. Using words that are not descriptive but may suggest the good or service being offered can be registered but don't often make a strong case for trademark approval.

Is it possible to register my trademark before using it?

Yes, there is a specific process for registering a trademark before its use. This is known as an Intent to Use. You can file an "Intent to Use" trademark application before the official use of a trademark. If approved, the USPTO will require that you show proof of use of the trademark before the six-month expiration time. You can file for a six-month extension up to five times, if necessary.

What do I do if someone is using my trademark?

If you find that someone is using your trademark, it is necessary to prove you are the first user of the trademark and that the competitor's use is likely to confuse consumers.

If you have the proof, then it is necessary to hire a trademark attorney who can advise you on next steps to protect your brand.

Can I trademark my company's internet domain name?

Yes, it is possible to register a domain name as a trademark, but only when it is used to classify goods and services within your business. Owning a URL or domain name is not enough to secure the registration of a trademark.

Can I trademark my company slogan?

It may be smart to register a business trademark slogan if you intend to invest heavily in a marketing campaign to build brand awareness. If your company uses a short catchphrase or slogan sold as part of a product, like on T-shirts or coffee mugs, this can be registered as part of a trademark. The USPTO is looking to see if there is creative use of the slogan or if it has developed a secondary meaning outside of colloquial use.

If two businesses are using the same name—and neither is a registered trademark—who has more rights?

If two businesses are using the same unregistered trademark, then each business would have to rely on common law rights that apply to their geographical area. If the geographical location of the business and the goods and services classification overlap one another, then the business that can prove the earliest date of the use of the business name will usually have rights over the other.

Can I make changes to a trademark once it has been filed?

It is possible to make changes to a trademark application once it has been filed. However, how to do it and the trademark registration fees associated with the change can depend upon the timing of the changes. The applicant may need to file a new application rather than make any changes to an existing application. If the change to the application broadens the scope of the goods or services offered, then a new application may be the easiest solution. Keep in mind that a basic clerical error may not disturb your place in the approval process or require a new application.