Thursday, July 22, 2021

How and When to Trademark a Business Name

You likely spent a lot of time thinking up the perfect name for your business–it’s one of the first and most exciting things you do when you start a new business.

So it would be beyond frustrating if another biz popped up with a similar name to yours. 

Plus, you’d potentially have to go through a tiresome and expensive rebranding process if you don’t have any protections. 

But when you register a trademark you have complete ownership over your business name.

The only problem is registering a trademark is not the easiest thing to do.

So this post will guide you through every step of registering a business name with the United States Patent and Trademark Office (USPTO).

The Easy Parts of Trademarking a Business Name

A Clear Application

Trademarking a business name is simpler than trademarking your branding, i.e. your logo, slogan, and so on. There are fewer steps involved in the prep and application phases.

Furthermore, the application you’ll complete to register your trademark is relatively clear and straightforward and contains a lot of explanatory information you can refer to as you go along.

Apply On Your Own Schedule

If you file for your trademark using TEAS Standard, you can submit some of the required information in the initial application and some at a later date. You can also pay the application fee in two installments.

These aspects take some of the pressure off. Plus you can get the ball rolling even if you don’t have all of the information for your trademark application ready yet.

The Difficult Parts of Trademarking a Business Name

Preparing Your Application

What some people don’t realize is there’s a lot of prep work involved before you even start a trademark application. The most complex and time-consuming part of your preparation will be the clearance search.

You must conduct a thorough search to see if any other business name confusingly similar to yours already exists in the trademark register. And there are many elements to what the examining attorney may deem as confusingly similar, such as similar sounding words even.

There’s always a chance that you’ll miss something that the examining attorney doesn’t. As a result, your application may be rejected.

So you may want to seek outside help from a business formation service. These services take care of legal matters, filing important documents, and the like for you. As such, many business formation services offer a trademark filing service which includes an extensive clearance search.

Playing the Waiting Game

It can take up to three weeks for USPTO to confirm they’ve received your application. And that’s just the start of it.

Next, they’ll conduct a series of checks and your form goes to an examining attorney who decides whether your application can move forward. This may take several months. 

Then you may have to deal with a back and forth with USPTO if there are any errors or conflicts with your application.

All in all, it’s just a lot. And when you consider how important it is to protect your intellectual property, the process can be a bit frustrating.

Step 1: Decide if You Need a Trademark

When should you trademark a business name? 

There are certain circumstances in which a trademark is necessary and others where it’s pretty much pointless. Knowing what these circumstances are will save you time, money, and hassle.

Local vs. Nationwide Businesses

If you only operate in your local area then you may not need to acquire a trademark for your business name. You’re protected in your geographic area by common law, so a trademark may be redundant. 

You don’t need to do anything special to get common law trademark rights. You simply need to operate your business under your business name.

If you’re the first business in the area to use the name then you can enforce your rights and prevent others from adopting it–but only in your region. 

Your business name is also protected statewide if you incorporate or form an LLC in your area. If this is the direction you want to take, a business formation service can take care of the legwork here, too. 

On the other hand, bigger businesses that operate or plan to operate across the US are more likely to need to register a trademark for their business name with USPTO. It’s the only way to protect your business name nationwide.

With a trademark, you can file lawsuits in federal court to protect your business name.

Will You Be Successful?

If it’s unlikely that you’ll be able to trademark your business name then there’s no point wasting your time and money. So it pays to know what kind of business names can’t be trademarked.

First, you can’t trademark a business name that’s confusingly similar to another. We’ll explain the details around exactly what this means later in this guide.

It’s also important to note that it’s highly unlikely you’ll get a trademark if you operate under a descriptive business name. 

This refers to personal names like Jenny’s Cupcakes, location names like Atlanta Daycare, and names that describe the goods or services you offer like Best Translation Agency.

The only way you can get a trademark with a name like this is if you can prove that the name is so widely used that people already associate it with your business. 

It is a good idea, however, to trademark a business name if your name, product, or service is unique. For example, it might be a made-up word that only refers to your business, such as Accenture. Or a business name that comes from a unique product, like Mooncup.

Step 2: Search the TESS Database

It’s vital you search USPTO’s Trademark Electronic Search System (TESS) for similar business names before you file your trademark application. The database contains every trademark registered in the US.

If you fail to do a proper clearance search and there’s already a similar business name out there, then your application may be rejected. Considering the fact that the application fee is non-refundable, a thorough search is definitely worthwhile.

Do a Basic Word Mark Search

When you visit TESS you’ll see that there are a few different search options. Begin with the Basic Word Mark Search.

Type your business name in the Search Term box and hit Submit Query.

You’ll then see a list of registered trademarks that contain your search terms.

You can use the columns on the right to see if the word marks are active. In this example, you wouldn’t be able to register the trademark as a live trademark already exists.

Check for Confusingly Similar Trademarks

When USPTO performs their own searches, they won’t just look for business names that are exactly the same as yours but also ones they deem confusingly similar

This means that the names are similar enough for consumers to think that the goods or services come from the same company.

First, two business names may sound confusingly similar even if they’re spelled differently:

Furthermore, two business names may be considered confusingly similar if they convey a similar meaning:

This means that when you perform your clearance search, you should also look out for variations on the wording of your business name, such as synonyms and other spellings.

Perform a More Advanced Search

There’s only a conflict between two confusingly similar word marks if the goods or services in question are also similar. To find such trademarks, use the Word and/or Design Mark Search (Structured) from the main menu.

From the first Field menu, choose Basic Index. This allows you to search for word marks. 

In the second, select Goods & Services

From the Operator menu, select AND

Then type in your search terms:

Find the proper terminology for your business category in USPTO’s Trademark ID Manual.

It’s also worth noting that even if the goods and/or services are similar, your application may be rejected, as in this example:

So you must also include similar goods and/or services within your industry in your clearance search.

Step 3: File Your Application Online

There are several pages to the online application. Some sections are simpler than others. 

But don’t fret – we’ll guide you through the most important stuff:

Choose TEAS Standard or TEAS Plus

If you haven’t already, you’ll need to create an account with to be able to file your application online. Then decide whether you want to apply with TEAS Standard or TEAS Plus.

You can make an initial application with TEAS Standard for $350. This option allows you to submit certain pieces of information and supporting evidence at a later date. For example, your attorney’s details or a JPG image of your goods labeled with your trademark.

Alternatively, you can go with TEAS Plus which offers a quicker and cheaper application at $250. However, if you choose this option, you must submit a complete application right off the bat.

Identify Your Mark

After you’ve filled in your basic information, you’ll be asked to choose the type of mark that you wish to apply for. If you solely wish to register a trademark for your business name then select Standard Characters.

It’s worth noting that this covers your business name in any font, color, or design.

The other option is a Special Form mark. Here, you’ll submit your business name in a specialized font or as part of a design. Note that this only covers your business name in that particular style.

Name Your Goods and/or Services

Next, you’ll need to name the goods and/or services associated with your trademark. You have to be as accurate and specific as possible here, so utilize the Trademark ID manual.

In your application, you’ll find a search bar that you can use to search for the right goods or services. Check one or more appropriate services from the list that pops up. For some entries, you may be required to add more details.

It’s important that you use the correct terms to describe your goods and/or services. An error here may lead to rejection.

Select Your Filing Basis

This section of the application is basically asking you why you’re registering a trademark. Most companies will answer either Actually using mark in commerce now or No use of mark yet, intending to use.

If you’re already using the mark, you’ll have to submit a supporting specimen. Take a JPG image of your goods or packaging that clearly displays your mark in use.

Complete the Final Steps

Towards the end of the application, you’ll be able to review everything you’ve submitted thus far. Check your application carefully as any errors may lead to it being rejected. 

You should have the opportunity to correct any errors at a later date. But why draw out an already lengthy process?

Check that the total fee you’ll pay is correct. Note that if you have multiple classes of goods or services, you have to pay for each class.

Finally, sign the document before you submit it and pay the fee. There are a few ways you can sign but an electronic signature on the application form is the simplest method.

Check the Status of Your Application

You’re responsible for monitoring the progress of your application. You can do this via the Trademark Status & Document Retrieval system (TSDR).

It’s advisable to check your status every six months at the very least. This way, if there are any issues or if you must send additional documentation, you can take care of it in a timely manner.

If your application is rejected, perhaps because of a confusingly similar mark or errors in the application, you have a chance to remedy the issue. You’ll receive notification of what went wrong (office action) from USPTO. Be sure to respond within six months.

from Quick Sprout