How to Trademark Your Financial Services Business Name

By Josh Gerben, Esq.

The number of people nearing retirement is growing every year, and the younger generation is more interested than ever in long-term financial security. Both segments of the population present a broad need and opportunity for financial services and advisers, which has created a boom in that industry. No longer the realm of large firms and consultancies, financial service providers are often as small as just a few people – in fact, your business may even consist of only you.

Regardless of the size of your financial service business, one constant remains: the need to protect your name and reputation through trademark registration. From the regional business landscape to the nationwide opportunities presented by the internet, it’s critical that you reserve and protect your name in order to prevent confusion and potential lost business to other firms who may be offering similar services under a similar name – intentionally or not.

Getting started with a trademark for your financial advisory is easier than you may think, and can pay dividends down the line as you protect your bottom line. Here’s how to get started:

Conduct a trademark search on the name of your financial service company

The Lanham Act governs United States trademark law, and it provides specific protections for trademarks. It ensures that no two businesses in the same or similar industries can use the same or similar names, lest consumers confuse one for the other. Thus, it’s in your best interest to research the name you wish to trademark before beginning the formal application process – the research phase gives you a better chance of avoiding confusion or overlap with another name in the finance sector (or one related to it).

The “confusingly similar” clause of trademark law often trips up applicants. Marks that sound alike, resemble each other with different formatting or spacing, or use similar design elements, may all be considered “confusingly similar” and may be rejected – and these may all slip through the cracks of a reasonably thorough research process. A trademark attorney has access to powerful search tools that can identify existing marks that may trigger a “confusingly similar” red flag for the name of your financial service business. Consulting with an attorney at this early stage can save you time and effort down the line.

Draft and file a trademark application with the USPTO

Once you’ve completed your research and are reasonably sure that the name of your financial advisory firm will not confuse consumers with the name of another financial advisory firm, you’re ready to fill out and submit your trademark application. Beyond the standard information about you and your company, you’ll need to submit a trademark specimen – an example of how your mark is used in commerce. Since your financial advisory is a service and not a product, your mark will most likely be used in advertisements, and on flyers, as opposed to product identifiers like packaging or tags.

The bottom line is that a trademark attorney can help you ensure that your application is filled out correctly and not get refused due to a technical deficiency.

Your trademark application will, barring any Office Actions or other delays, take about eight months  for approval. Until that time, you should continue to use the small “TM” designation in conjunction with your mark, indicating your claim to the trademark.

Using and police your trademark properly after registration is issued

Once your mark is registered, you’re entitled to use the circled “R” symbol, signifying trademark registration. This symbol, along with your mark’s listing in the USPTO Principal Register, notifies the public of your exclusive rights to the mark.

Your job does not end with successful registration, however. You must remain aware of any other financial service companies using names identical or similar to yours and demand that they do not use the name.  The internet can help you stay abreast of any new companies that may be inadvertently infringing upon you, as can publications provided by the USPTO on a regular basis.  Also, most trademark law firms offer a monitoring service to watch for any new filings made with the USPTO that might infringe on your trademark.

You may wonder why you need to remain vigilant of other financial service companies in other regions who pose no ostensible threat to your business, and who are not purposely infringing upon your trademark. The main reason is that unpoliced, free use of your trademark can cause you to lose the ability to claim any rights in your trademark.  You must continuously monitor, and vigorously protect the integrity and proper use of your mark, in order to protect your bottom line and your continued success as a business.

• SHARE THIS ARTICLE ON:

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.