How to trademark a business name to ensure it stays one-of-a-kind

Rawpixel.com // Shutterstock Creating a unique business name is one of the most exciting parts of starting a new business. This name is a key feature of your brand, and it’s smart to protect it with a registered trademark. A trademark could be a word, phrase, tagline, or logo associated with your product or service. Getting a trademark gives you exclusive rights to identify your product or service with that name or tagline, informs everyone that you own that trademark, and legally bars others from using it or piggybacking on your brand. How to Get a Trademark in 5 Steps The trademark application process can be complicated. Here are some insights from LegalZoom that will help you understand how to trademark a name and what you need to know before applying for trademark registration. 1. Confirm if you need a trademark  Getting a trademark can be tricky and time-consuming; therefore, before embarking on this registration process, ask yourself, “Do I need a trademark?” One important factor to understand here is common law ownership. Common law ownership for a business name means that you get basic protection and rights as soon as you start selling your product or service without having to register the name formally. However, common law rights only go so far. One limitation of common law ownership is that your name is only protected in the geographic area where it’s being used. When you register a trademark with the United States Patent and Trademark Office, or USPTO, your trademark rights protect you nationwide. This is especially helpful as your business grows and you start selling your products or services outside your local area. Similarly, in the event of a court dispute over your name, common law ownership only offers limited protection. With federal trademark registration, you can file a trademark infringement lawsuit in court. If you really want enhanced protection, it’s a good idea to register your trademark as soon as possible. If you need clarification on whether a trademark is right for you, an initial consultation with an attorney can be helpful. They can assess your situation and advise you on the best action. 2. Research existing trademarks to ensure yours is distinct It’s best to avoid getting too attached to a name before completing a search of existing trademarks through the USPTO Trademark Center. The hallmark of the USPTO accepting your trademark is distinction. If you find a similar mark in the results, your trademark application will probably get rejected. Here are some tips for performing a comprehensive name search: Look for more than just exact name matches. Identify any similar marks that can confuse the customer Use quotation marks around phrases you want to search together Use multiple variations (spellings, plural form) of the name Use the “Design code” or “Mark description” fields if your business name includes any symbol or design mark USPTO provides detailed guidelines on how to perform a trademark search. If you find this all too overwhelming, it might be better to enlist the services of a trademark lawyer to perform the search on your behalf.  3. Prepare your trademark application Preparing the application is the most crucial yet time-consuming part of the entire registration process. You need to gather the following information and make sure it’s as accurate as possible: Name, address, and contact information of the individual or business that will own the trademark. Description of the mark. If you use your business name without any special symbols or colors, it would be considered a “Standard character mark.” Identify the trademark classification (the category under which your product or service falls). Reference the Trademark ID Manual for guidance. You can file under multiple classes, which will bump up your filing fees. Filing basis. You can apply under two options: “intend-to-use” or “in commerce.” The latter option is ideal if your mark is already being used (the name is already on the shop billboard and all outgoing packages). You’ll have to submit proof of use as supporting documentation. 4. File your application You can file your completed application a few different ways: Online. The preferred method to file your trademark registration is through the USPTO Trademark Center. The cost for online trademark registration is $350. On paper. You can file by mail or hand delivery. This method will run you $850. Hire a trademark attorney. An attorney can help ensure that your application will not face delays, penalty fees, or rejection. You can expect an attorney to run you several hundred to a few thousand dollars. Use an online service. These services offer more flexibility with the assurance of expert guidance.  Once your application has been received, you’ll get a confirmation that includes a serial number. Keep this number safe–you’ll need it to check on your application registration status. 5. Wait for USPTO application review  The waiting game begins now. This review process can take a few months, so don’t hit the panic button if you don’t hear back immediately. A government trademark attorney is assigned to review your application, and they’ll decide whether to approve your name trademark. If the examining attorney raises any discrepancies or questions, you or your lawyer will receive an “Office Action” letter that explains the concerns. Applicants are generally given three months (six months if an extension is approved) to reply to the office’s actions, state their case, and make any required changes. If they fail to respond within that timeline, the application is canceled. If the examining attorney approves your initial application filing, the trademarked name will be published in the “Official Gazette,” a weekly online publication announcing new trademarks. This publication gives other businesses and any other third party a 30-day window to file a notice of objection. If the office doesn’t receive any valid complaint, they will approve and register your trademark and send you a confirmation. This process can take another three to four months. In the unfortunate event that a business does contest your trademark, you’ll have to present your case in court before the Trademark Trial and Appeal Board, or TTAB. If approved based on an intent to use the application, you would receive a notice of allowance, which means your mark has been allowed but won’t be formally registered until you begin using it in business and file a Statement of Use and a specimen that shows your name in use. When your registration is complete, you can begin using the registered trademark symbol, ®, next to your name.  What Can You Trademark?  Anything from your company business name, color, slogan, symbol, and tagline to even a jingle can be trademarked. Think of it this way: if it helps your customers identify your brand among the other businesses and say, “Yes, I know them!” then it can be trademarked.  The following things can’t be trademarked:  Commonly used or generic terms like “boutique” or “salon” Descriptive terms that simply state what the product does Functional design or features like the shape of a screwdriver or wrench  Consult an experienced intellectual property attorney to understand what can and can’t be trademarked.  Limitations of a Trademark There are limitations to what a trademark can do and protect. Yes, a trademark grants you exclusive rights to use a particular name, color, or logo. But, this protection applies only to the specific goods or services you have registered under. For instance, if you’ve trademarked “Budding Blossoms” for a children’s clothing line, another company can use the same name for their wedding floral business, as it falls entirely into a separate class.  Also, the USPTO only registers and keeps a record of the trademark. The burden of the enforcement and legal action ultimately falls upon you. Therefore, if you’re the trademark owner for the name “Budding Blossoms” but have never used the name commercially, another business can use the same name and challenge your trademark on legal grounds of nonusage. Here’s another scenario: if you’re actively using the trademarked name and find another business entity using the same name, you’ll need to ring the alarm, send a cease and desist letter, or file a lawsuit with the court.  A trademark gives you legal rights and exclusivity to use a business name within the U.S. You’ll need to file for an international trademark if you want trademark protection and rights in a foreign country.  How Much Does it Cost to Get a Trademark?  The base fees for registering a federal trademark are $350 per class of good or service for an online filing and $850 for a paper filing. Each fee only covers a single trademark application. If you’re filing a trademark for multiple classes, you can expect to pay an additional fee for every class of goods or services selected.  Also, the filing fees are non-refundable. So, if your paperwork gets rejected, there’s no way to recover the application fee. You may also face an additional $100 if your application is delayed due to insufficient information. For these reasons, it’s best to do ample due diligence and research before applying for the trademark.  The costs don’t end with the initial filing, however. For instance, between the fifth and sixth year of registration, you must submit a Section 8 declaration, which currently runs $325. The filing fee for this is contingent on the class of goods and services. There’s also a 10-year renewal fee for a combined Section 8 and Section 9 renewal, which costs $650 per class. Maintaining Your Trademark Unfortunately, even if the USPTO approves your trademark registration, it’s not a one-and-done scenario. It’s your responsibility to maintain your trademark and “keep it alive.” Keeping your trademark involves:  Actively using it in commerce Completing maintenance paperwork as per deadlines  Submitting proof of use of the trademark (like the use of the name on the product label or packaging) for each class Paying the required fees for declarations and renewals The filing deadlines are dependent on the exact time of official registration. U.S. trademark applicants need to submit the following paperwork.  Documents to Submit Declaration of Use or Excusable Nonuse: Between the fifth and sixth year and between the ninth and 10th year Application for Renewal: Every 10 years after that (19th-20th, 29th-30th) The bottom line is that you can make your trademark last as long as you need it by following the rules set by the governing agency. If the trademarked name isn’t used for an extended period of time, the USPTO can cancel the existing trademark registration.  Common Reasons Why a Trademark Is Rejected Did you know that almost half of trademark applications are denied? Avoid these critical mistakes to prevent your application from falling into the rejection pile.  Don’t register a trademark for non-business purposes. You can only trademark a brand name that you’re using in business or that you intend to use in business in the near future. Don’t register a generic or descriptive name. Your trademark name has to be distinctive or unique in some way to be approved. Words or names like “Creamy Cold Ice Cream” or “One Day Fast Delivery” won’t pass muster as they don’t identify or distinguish the product or service.  Don’t use a name that can create confusion among consumers. This can happen when your name is too similar to an existing trademark or a pending registered mark. When similar marks are used on related goods and services, consumers can get confused and mistakenly believe they come from the same source. That’s why every trademark application must specify the type of goods or services where a trademark will be used. Don’t wait till a product or service launches to file for a trademark. By delaying your trademark application until you’re ready to launch your business or everything is “perfect,” you risk another party getting trademark rights for the same name. The USPTO recognizes and registers trademarks on a first-come, first-serve basis.  Do I Need a Lawyer to Trademark a Name? If you are a registered U.S. business entity, citizen, or permanent resident of the U.S., you aren’t required to get legal assistance to file a trademark; you can certainly go the DIY route. However, the trademarking process is complex, and many factors must be considered. Working with an experienced trademark attorney significantly increases the likelihood of approval on the first attempt. The attorney can help you understand what can be trademarked, provide guidance on the trademark application process, research the USPTO database, and create an action plan in case of conflicting search results. They can also reduce the risk of application errors, such as using a weak trademark or missing deadlines. While hiring an intellectual property lawyer may seem like an expensive affair, they save you time, money, resources, and legal headaches in the long run.  FAQs on Trademark Registration Is it worth trademarking my business name? Absolutely. Your business name is not only a valuable asset, but it also establishes your business’ identity. Protecting it via a trademark can really pay dividends as it ensures uniqueness and provides a sense of security and protection. Also, having legal protection and trademark rights at the federal level makes expanding business across state borders easier. What are trademark classes? Trademark classes are how the USPTO office organizes goods and services into broad categories. An international agreement defines these categories. Trademark classes are used to determine filing fees. They are also helpful in researching the USPTO database to identify registered and pending trademarks.  Your registered mark only provides legal protection under the class of goods or services you have selected. If you wish to expand the use of the name to another category, you will have to file and pay an additional fee for each new listing. Here’s an example: You wish to trademark the business name “Budding Blossom” under children’s clothing and a day-care center. Those are two different classes, and you must pay separate fees. For more information, review this complete list of trademark classes. Can I file for a U.S. trademark from outside the U.S.? You can trademark a name in the U.S. even if you are living in another country. As a part of the filing requirements, your business needs to submit proof of foreign registration and trademark use for the same class of goods or services. As a foreign applicant, you must hire a licensed U.S. attorney to complete the entire process and represent you before the USPTO. Any business registering from outside the U.S. can also use the Madrid Protocol to complete the trademark registration process. What is the difference between the ™, SM, and ® symbols? Many assume the ™, SM, and ® symbols to mean the same thing. They don’t. The ™ symbol generally represents goods and should be used if you are waiting for the USPTO to review a registration. The service mark, or SM, works similarly to the ™ mark but is used for services. The ® symbol means that a trademark is registered.  This story was produced by LegalZoom and reviewed and distributed by Stacker.