How To Trademark A Business Name
The first thing to understand about how to trademark a business name is that a business name is not necessarily a trademark. A business name generally refers to the entity name – for example, ABC Inc. or ABC LLC. The entity name, however, is not a trademark merely because it is a business name. A great example of this is the TOYS-R-US trademark. TOYS-R-US is a trademark, but it is not the entity name. (Geoffrey LLC is the owner of the TOYS-R-US brand.)
A trademark, unlike an entity name, functions as a source identifier – it identifies to the consumer the source for the particular product or service. So while it is certainly possible to have your entity name and your trademark match, there is absolutely no obligation that your entity name have any relationship at all to your trademark.
The process of trademarking a business name
Assuming that your business name functions as a trademark, it is important to understand the process of getting the business name trademarked. The first step is determining the registerability of your business name. Not all business names can be trademarked. Names that are generic or merely descriptive are generally not capable of protection. So, for example, if your business name was “ROOFS AND MORE” for roofing services, there is a good chance that the USPTO will refuse the business name as being merely descriptive of the services offered.
Before spending time and money on the registration process, you will want to have a good understanding of where your business name falls within the strength spectrum. Assuming that a determination is made that the proposed business name makes a strong and protectable mark, the next step is to “clear” the trademark.
Trademark Clearance for Business Name
Once you have determined that your business name is sufficiently distinctive and non-generic or descriptive, the next step is to run trademark searches to ensure that the proposed trademark is not confusingly similar to (or infringing upon) other pending or registered trademarks.
There are two types of searches you will want to conduct in the United States. The first and generally more important search is the federal search. Federal searches are limited to those trademarks that have been filed with the USPTO. The USPTO provides free search engines for searching trademarks, and this is certainly a good starting point for the federal searches. Your initial search should focus on identical or very similar wording to see if there are any direct conflicts. Even if you do not find any directly conflicting trademarks, it is important to understand that your application may still be refused based on less obvious conflicts that the trademark office locates during their examination of your application. For example, your trademark may contain several words and only some of them overlap with a registered trademark. You may be quick to conclude that there is no conflict. Yet, if the examiner finds that the overlapping words are the “dominant” terms in the respective trademarks, the USPTO may nevertheless conclude that the trademarks are confusingly similar and refuse your registration on that basis. It is, therefore, very beneficial to have an experienced attorney run the searches for you and provide his or her analysis of the results.
A common law search is the second type of search that is important to conduct prior to filing or investing in trademarking your business name. Common law trademarks are trademarks that have gained legal protection merely by their continuous use in the marketplace over time. Common law trademarks do not need to be registered with the USPTO to have legal protection nor to challenge federal trademarks. So, for example, if you file for a federal trademark at the USPTO, another party having senior common law rights to the business name can challenge your federal application based on that party’s non-federal trademark. The Internet, of course, is a wonderful tool in conducting common law searches. A more comprehensive common law search will include searches of business names and trademarks in all states, and your trademark attorney should be able to conduct the comprehensive searches for you.
Filing your business name as a trademark
If your clearance searches suggest that if you trademark a business name it is not conflicting with other federal or common law trademarks, the next step is to file with the trademark office. The application can be filed online at the USPTO website and the filing fee can be paid using a credit card. After filing, your business name trademark application gets assigned to an examining attorney.
Between 3 and 4 months after your application is submitted, the examiner will review your application. The first thing the examiner will do is consider whether the proposed business name is capable of protection – is the business name descriptive or generic, etc.
Next, the trademark office will conduct federal trademark searches to determine whether the business name is sufficiently dissimilar from the other pending and registered trademarks. Assuming that the examiner finds no conflicting trademarks, the examiner will then allow you to trademark a business name. The trademark is then assigned a publication date and the proposed business name is published in the Official Gazette.
The publication of the business name trademark in the Official Gazette provides to third parties the opportunity to be notified of the fact that you are seeking a trademark for your particular business name and to challenge your trademark registration in the event that they believe that your trademark is confusingly similar to theirs. The publication period is a 30 day period.
Assuming that no one challenges your case during the publication period, one of two things happen, depending on whether your trademark was filed as IN USE or as INTENT TO USE. If your business name was initially filed as an IN USE trademark, then following publication, the USPTO will issue your certificate of registration. If, on the other hand, your business trademark was filed as an INTENT TO USE trademark, then following publication, the trademark office will issue a NOTICE OF ALLOWANCE, which provides you a 6-month window during which to submit proof of your use in commerce.
In most cases, you should hire a competent attorney if you are going to try to trademark a business name. There are many details that must be thought through and often only someone with experience in trademark cases knows the in and outs of the process.