Should I Trademark My Name? – Building Your Brand

By Josh Gerben, Esq.

You work hard to protect your company’s image through unique naming, branding, imagery, and other intellectual property. A carefully planned trademarking strategy can protect you from competitors who may want to infringe on a name or other elements of your brand – often before you’re aware that it’s happening.

Let’s take a look at how trademarking provides the strongest line of defense against infringement. You’ll also find a few pointers and best practices for your trademarking strategy.

Why is having a trademark for your name so important?

A registered trademark can be a name, word, phrase, symbol, design, or other clearly defined item that establishes your company’s identity in the customer’s eyes.

Trademark registration protects a name from infringement, but it also:

• Creates public, legally documented ownership of the name as part of your business. This can prove to be a tangible, valuable asset.
• Provides a powerful legal tool to challenge or prevent anyone from purposely or inadvertently infringing or damaging the integrity of a name.
• Allows you to stop any “cybersquatters” who try to register a domain name using your name or brand. They may attempt to sell it back to you for a profit, or simply keep it as a way of blocking your marketing.

It all starts with the USPTO

Trademark registration with the United States Patent and Trademark Office (USPTO) is a public process that grants legal recognition of your exclusive rights to use a name or other branding in connection with your business.

No one “owns” the USPTO. It’s a governmental entity, so any business, organization, or individual can apply for trademark protection using its online tools. Some entrepreneurs choose to tackle the task in-house, while others rely on representation from an experienced trademark attorney.

You’re responsible for enforcement

The USPTO grants registered trademarks, but it isn’t responsible for defending against anyone who infringes on a name. You are responsible for taking action to stop them, often by enlisting legal representation. Learn more about our enforcement services.

Trademark enforcement is an ongoing process that requires diligence and vigilance. But if you discover potential infringement, you’ll have solid legal ground to fight back by using a trademark that’s enforceable nationwide.

Start by asking three questions

That doesn’t mean you should file for a legal trademark on every name. Ask yourself three important questions before filing for a trademark:

1. Will you be using the name in your business? The USPTO will require tangible proof of use in commerce, both during and after registration.
2. Is the name substantially different from any that is already used by other companies in your space? After all, they’re entitled to the same protection that you will get with a registered trademark.
3. Is it unique enough that registration is likely to be successful? For example, the USPTO will typically reject names that are misleading, too generic, too descriptive, or don’t accurately reflect their purpose. It’s a fine line to walk, but it’s worth the effort.

USPTO approval is never certain. Just because you file for a registered trademark doesn’t mean that you’ll succeed. But answering “yes” to all three questions is your first step on the path to protection.

Tips for finding the right trademark name

Start by checking potential names against the USPTO’s Trademark Electronic Search System (TESS) database. Eliminate those that are too similar to a competitor’s trademark, or are already being used on related products or services. That will keep you from spending time and money on a name that’s unlikely to survive the process.

Here are some approaches for creating a strong name that’s likely to be approved, and also easy to defend:

• Modify, manipulate, or combine existing words. Apple has used this technique to perfection with iPad, iPod, and iPhone. Ray-Ban paired two common words to create a perfect brand for sunglasses.
• Invent a catchy one- or two-word term, or repurpose an existing word. It can reflect your product or service – like Netflix – or be an arbitrary but clever name like Echo, Taser, Etsy, and Zillow.
• Avoid using generic words. This includes anything that explicitly identifies a product or service. A company can’t claim specific rights to a commonly used term like “smart home” or “software.”

However, that line can become a bit blurry when a generic word is used in connection with a descriptive word. Think about Hamburger Helper or Ten Minute Oil Change. This is when advice from an experienced attorney can help you navigate the nuances and create a solid, defensible trademark.

Filing your application

Once you decide on a trademark, the USPTO lets you apply on its website. The application begins with the Trademark Electronic Application System.

You’ll have to decide whether to apply on an “Intent to Use” basis, meaning that you intend to use the trademark in commerce; or a “Use in Commerce” filing, which means you’re already actively using the trademark in commerce. Either way, the USPTO will need tangible, documented proof at some point that you’re using the trademark.

Checking your progress

You can use the Trademark Status and Document Retrieval (TSDR) database for status updates throughout the process.

Make it a habit to check regularly for any issues that might arise, such as deadlines, fees, or necessary documentation. That’s because your application could take a considerable amount of time to work its way through the process.

Exercising patience and vigilance

For example, it can take from 4 to 6 months just for your initial application to be reviewed. After that, there are additional steps (including review by a USPTO examining attorney) that can take several more months.

Stumbling blocks can emerge at any point. It’s the responsibility of you or your legal counsel to make adjustments or corrections.

Once the process is complete, you’ll receive a document that certifies official registration of your trademark. From then on, that name or brand has the highest degree of legal protection.

Even after your trademark is fully registered, you’ll have to file paperwork periodically to maintain the trademark even years after it is granted. You’ll be notified whenever documentation is required.

There’s no substitute for expertise

Your name and branding are important enough to enlist help from an experienced trademark attorney who knows the process inside and out. They’ll file any essential documents, receive any important notifications, and guide you regarding which steps need to be taken at any given time.

Whether you decide to navigate the process yourself or trust an experienced attorney, remember that a successful business protects its name and branding. Registered trademarks are essential to that strategy.

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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.