If you’d like to protect your legal business name, DBA, product names or other intellectual property on a national level, then you will need to consider trademarking. In order to trademark a business name, you need to submit an application with the U.S. Patent and Trademark Office. Keep in mind that the world of trademarks is highly complex, and you may need to hire a trademark attorney or take the USPTO training course before you submit your application.
Understand the Basics of Trademarks
Trademark registration ensures federal protection for your business and product names and logos. You can trademark a word, phrase, slogan, symbol, design or combination of those elements for exclusive rights to their use. A trademark tells other businesses that these elements are from your business and cannot be used by others. It also tells your customers that the products come from your business, not from a different one.
Trademarking your business or product names helps you establish your company brand. If you use your names consistently, then consumers will associate your products with your brand. This could help them make a decision to purchase your product over a competitor.
While anyone from a small business to a corporation can register a trademark, keep in mind that trademarks offer protection within your industry. In theory, you could use a trademarked name from another industry but only if it doesn’t confuse customers and make them think the product is affiliated with the other company. You cannot use a trademarked name from a different industry if it is famous. For example, you couldn’t use the name "Nike" or "Google" for your flower shop because those names are widely known.
Why Register a Trademark?
There are many benefits to registering your trademark:
- When you register your trademark with the USPTO, you establish the exclusive legal trademark rights to use that mark over other businesses across the country.
- You have legal ownership of the mark when you register it federally. This provides the trademark owner with benefits when you need to enforce your rights.
- The public, including consumers and competitors, can see that you have registered with the USPTO when they are searching the database.
- If anyone else wants to use the same or a similar mark, he will not be able to register it with the USPTO if you have already registered it.
- Trademark protection allows you to use the trademark symbol with your mark, which is a small "R" inside a circle, to let everyone know that your mark is trademarked with the USPTO.
Hire a Trademark Attorney
The application process for trademark filing is a complex legal process that is governed by U.S. law. If you’re a foreign applicant, you’re required by the USPTO to have a U.S. attorney represent you. While this is not required for domestic applicants, it is strongly encouraged by the USPTO. It’s best to work with an attorney who specializes in trademark law to work through the application; do not accept legal advice from a nonattorney or a foreign attorney for this important process.
In addition to hiring a trademark attorney, the USPTO recommends that applicants work through the TEAS new-applicant tutorial, which provides guidance on the steps you need to take in order to correctly fill out your application. Because the trademark application is a legal proceeding, there are strict rules and regulations on how to complete the process. You also have to be mindful of the strict deadlines and timelines.
Identify Your Mark and Products
You can only file a trademark if it is both federally registerable and legally protectable. If it isn’t, then it’s likely that your application to trademark will be rejected by the USPTO. A strong trademark needs to avoid the likelihood of confusion for consumers. If the mark is too similar to an existing one in the same industry, consumers may think they come from the same source.
There are a number of concepts to keep in mind when selecting the mark you want to use:
- The mark must look and sound different from any other mark in your industry to avoid confusion.
- The mark cannot be generic because that does not identify your company as the source. For example, if a company that makes yogurt is called Yogurt, it’s unlikely that it can register that as a trademark.
- The mark cannot only be descriptive by using words that are common to the product, such as “delicious” for pizza. This mark does not identify a specific company as the source of the mark, so it isn’t federally registerable.
- If the mark suggests qualities or characteristics of the product without specifically describing them, it may be acceptable. For example, “short and sweet candy” may be a trademark.
- If a mark is fanciful or arbitrary, it has a higher chance of being registered. These marks are creative and unusual, so it’s easier to differentiate them from competitors' marks or other names in the industry.
You can register both a word mark and a design mark. For example, you can trademark the name of your company and the designed logo of that word as well. If you change the design of your logo, you may have to file a new application for that design mark even if the word in the logo is the same. A registration for a word mark enables you to use that mark in different designs as long as the word stays the same.
Ensure You’re Not Infringing on Any Other Trademarks
Before you begin your trademark application, it’s important to ensure you’re not infringing on an existing trademark by performing a trademark search. The USPTO Trademark Electronic Search System, or TESS, is a database that can assist you in your clearance search. Using this database, you can learn whether there are any other marks that are similar and used on related products and services.
In addition to searching the TESS database, you can also search through state databases as well as the internet to see if you find any marks that are similar to yours. It’s important to check other areas aside from TESS because if a mark hasn’t been registered federally, it doesn’t always mean it’s safe to use. The mark could be registered in a specific state. Also, if another company has been using a mark before you, it may have the right to use it over you even if it’s not registered.
Know the Details of Filling Out Your Trademark Application
Note that there are fees associated with filling out your trademark application based on the kind of application you submit:
- $225 per class of goods or services listed for a TEAS Plus application
- $275 per class for a TEAS Reduced Fee application
- $400 per class for a TEAS Regular application
The process for getting your application approved can take several months. The USPTO recommends that you check the status of your application every three to four months. You may need to file additional documents. You may also be required to file post-registration documents.
Enforce Your Rights
Only the owner of a trademark or her attorney is able to enforce the trademark. The USPTO does not track trademark infringement on your behalf. However, the USPTO works to ensure that no other company in your industry receives a federal registration for a mark that is the same or similar to yours. If you notice a trademark infringement, it’s your responsibility to take legal action with that company in order to get them to refrain from using that mark.
- United States Patent and Trademark Office: Basic Facts About Trademarks Videos
- United States Patent and Trademark Office: TEAS Tutorial
- United States Patent and Trademark Office: Trademark Basics
- Patent Trademark Blog: What is a Standard Character Trademark (Word Mark) vs. a Stylized Logo (Design Mark)?
Anam Ahmed is a Toronto-based writer and editor with over a decade of experience helping small businesses and entrepreneurs reach new heights. She has experience ghostwriting and editing business books, especially those in the "For Dummies" series, in addition to writing and editing web content for the brand. Anam works as a marketing strategist and copywriter, collaborating with everyone from Fortune 500 companies to start-ups, lifestyle bloggers to professional athletes. As a small business owner herself, she is well-versed in what it takes to run and market a small business. Anam earned an M.A. from the University of Toronto and a B.A.H. from Queen's University. Learn more at www.anamahmed.ca.