How to Trademark A Name

By Josh Gerben, Esq.

It’s a good idea to start the process of registering a trademark for your business name, company name, product name, or service, as soon as you identify the name you plan to use.  This is because the first step in obtaining a federal trademark registration for a name is conducting a search to ensure no one else owns trademark rights in that name.  You will want to ensure that you have flexibility to change the name if the initial trademark search finds anything too similar.

The second step to trademark a name is to file a trademark application with the United States Patent and Trademark Office (USPTO).

Why should I register a trademark for a name? 

Your trademark carries all the value – earned value and potential value – that the power of your name and brand has earned or will own in the future.  When you look at it that way, it becomes clear why it’s important to protect your trademark. Once you’ve registered it with the U.S. Patent & Trademark Office, you have the legal protection of the government on your side should any competitor try to siphon off your business based on your success.

Technically, trademark protection is based on first use of a name – regardless of application status. Before you submit your application, and while it’s still pending, you can signify that a trademark belongs to you by using the little capital “TM” letters after your name (or “SM,” for “service mark,” if you offer a service). Once your trademark application is accepted (but not before), you’ll start using the little circled “R” after your trademark, meaning that it’s registered. Learn more about those usages here.

Important considerations prior to filing a trademark for a name.

So, your very first step when you want to trademark a name is to come up with the name itself, and, if you’re trademarking it in a stylized or logo format, those design elements as well (you may want to trademark both your “standard character format” name, as well as your logo, depending on your circumstances). 

When you’re naming your business, you’ll want to think in trademark terms: it should be a unique, uncommon name.  Ideally, it’ll be a word or phrase that doesn’t actually have any meaning aside from as your trademark. That way, you’ll have the best chance not only of securing the trademark initially, but also of enforcing it down the line – there’s little, if any, chance of someone else coming up with the same term. Some things you want to avoid: generic names, or names that are merely descriptive of the product or service that you offer, without any differentiators. The USPTO will reject names like those, and even if they didn’t, they would be difficult or impossible to enforce. More on that later.

Once you’ve established your name, you’ll enter the research stage. This is where you or a trademark attorney will conduct a search of all existing registered trademarks in the U.S., to ensure that you yourself aren’t infringing on another already-established trademark. Keep in mind that registration protects not only identical trademark names, but also similar-sounding or similar-appearing names among similar companies that may run the risk of confusing consumers. For that reason, it’s best to have a trademark attorney conduct the search – a general search engine or USPTO search isn’t powerful enough to locate alternate spellings and other nuances of the name you want to trademark that might lead to the rejection of your application.

The above situation is another great reason to start the process of trademarking your name as soon as possible. Not only are you protected from others, but you’re also helping to lower the risk that you will be accused of infringement. If you do in fact infringe on an existing trademark before making sure that you’re the first to use it, you may be liable for damages claimed by the other party.

But ideally, you’ll choose a completely unique name for your industry or sector, and you’ll be ready to move on to the next step: application submission. At this point, your mark will either be considered “in use” or “intent to use.” Either way, you’ll submit the necessary paperwork to the USPTO.

How the USPTO trademark registration process works for your name.

Once your trademark application reaches the USPTO, you’ll wait for a while. It will go into an examining attorney’s queue, who will conduct their own review of all registered trademarks, once again ensuring that your mark isn’t already in use. The time that these multiple review processes take is indicative of how seriously the government takes trademark protection – and how valuable it will be for you to have your mark secured, once the process is through.

After the attorney review process is completed – which can take six to eight months – if you have a legitimate claim to your requested trademark, you’ll be awarded registered status, and your trademark is now yours to use and enforce. (If you submitted an “intent to use” application earlier, you’ll be required to submit additional proof-of-use paperwork at this time). As we mentioned earlier, enforcement is an important part of owning a trademark, and it’s why you want a unique name.

Important considerations on how to ensure continued protection on a name after the trademark is registered.

The responsibility of enforcement falls on the trademark holder – you. Not only do you want to make sure that no one else is using your name or a similar name to sell goods – you want to avoid what’s called “generic use” of your mark. Manufacturers of products like facial tissue, adhesive bandages, and correction fluid have long waged battles against the generic use of their particular trademarks. Why? If a trademark enters the common vernacular as a generic term, the owner can lose the rights to the term. It’s happened to everyday terms like “zipper” and “escalator” – and it’s why those manufacturers mentioned above are aggressive in dodging the same fate.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.