How to Register and Trademark a Brand Name

What is a trademark?

According to the United States Patent and Trademark Office (USPTO), a trademark is “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of the others.” It’s a legal protection you can use to take legal action against an entity if they’re misrepresenting your brand or using it without your consent. 

A trademark is different from a patent, which governs technology and ideas. Something patented cannot be used in another entity’s products or services without that entity’s permission. A trademark is also different from a copyright, which applies only to artistic works. Entities other than the work’s copyright holder may not copy the work or use it for profit without the copyright holder’s permission. Doing so is known as copyright infringement.

Steps to trademark your company name

Trademarking your company’s name is not as simple as filing for an LLC and may take more time than you imagine.

1. Search

First, you need to search the federal database to ensure the name you want to trademark isn’t already protected as a trademark. You can do this with the USPTO’s Trademark Electronic Search System, also known as TESS. You should search not only for the name you want, but also for similar names. Your registration could be denied if the name is too similar to a name already registered within the same class.

While this sounds straightforward, it can be complex. Iguana Ice Cream and Iguana’s Ice Cream might be too similar, for example. It can also mean that a registered trademark simply looks or sounds like your mark or that the meanings are similar.

2. Apply

Once you’ve searched and cleared the name you want to trademark, it’s time to prepare your trademark application. You can file for a name already in commercial use or with an intent to use the name in the future.

The trademark application itself has 10 components:

• The name and address of the applicant
• The citizenship and legal entity of the applicant
• A name and address for future correspondence (this does not have to be the same as the name of the applicant)
• A drawing of the desired mark (if you are only applying for the name and don’t want to include a design element, you simply type in the name)
• A thorough description of the mark
• A specific list of services or goods covered by the trademark application
• The class of services or goods
• An example of the mark in use as well as the date it was first used
• A dated signature from you or an authorized representative
• The appropriate fee for the type and number of classes included on the application

3. File

Once you have completed the application, you have two filing options: TEAS Plus and TEAS Standard. The Plus option is less expensive and more streamlined; it also has a lower rate of rejections. However, if you need to create a custom description of your services or goods that is not available in the preset list Plus provides, the risk associated with the Standard option may be more beneficial for your situation.

Once you’ve submitted your application, you will receive a confirmation receipt from the USPTO and a serial number that you can use to check the status of your application in the Trademark Status & Document Retrieval (TSDR) portal.

Trademark FAQs

What is the difference between a trade name, trademark and service mark?

A trademark protects goods, and a service mark does the same for services. However, the word “trademark” is sometimes used for both types of marks. Both are designed to limit the ability of competitors to mislead consumers with false claims of where a product or service originates.

A trade name is what is used in place of the official business name. This is often indicated on paperwork with the phrase “doing business as” (DBA). It is used when the business name is considered too lengthy or when the desired name is too close to one that already has a trademark or service mark. (Note that a trade name does not indicate the legally responsible entity behind the service or product.)

What are the types of trademarks?

There are four types of trademarks:

• A descriptive mark describes at least two elements of a product or service.
• A suggestive mark implies a meaning rather than stating it outright, such as the Target logo.
• A fanciful mark is a word, phrase or logo unlike any other, such as Sony.
• An arbitrary mark is a word, phrase or logo from everyday language used in a unique way for a business. Amazon and its hybrid smile-arrow logo are great examples.

Should you trademark your company name?

It isn’t necessary to register your mark to receive protectable rights. In the United States, you are granted “common-law rights” to a mark simply by using it as part of your business. This means that you could begin using it and enforce your ownership of it through documentation of being the first to use it commercially. However, there are limitations on your rights with a common-law trademark.

Registering for a federal trademark has a number of advantages. Most importantly, it gives you legal ownership of the mark and the exclusive rights to use it anywhere in the nation as it relates to the goods or services you listed during registration. Common-law rights are limited to the immediate geographic area in which you are operating, and registering the name with your state only protects your rights within the borders of that state.

When you register your mark with the USPTO, there will be a public notice stating your ownership, and it will be listed in the online database. With a federally registered trademark, you also have the option to register your trademark with the U.S. Customs and Border Protection to keep foreign goods from being imported with the same name. You’ll also be able to use the federal symbol (®) instead of the less enforceable (™) mark.

The name of your company is the main way you present it to the world. Imagine someone else using your company’s name to make offers that are antithetical to the mission and values of your business. If you want to afford your business the maximum legal protection, you will need a trademark.

When you file for a trademark, it covers only one classification. Each additional classification must be noted in the application and will incur an additional charge. There are 45 classes to be considered. For example, if your business produces vehicles, you would want a Class 12 trademark. If you additionally wanted to sell clothing with the name of the same company on it, you would need to also have a Class 25 trademark. Consider exactly how you will be using the name to determine which class or classes you should list it under.

Who should trademark their business name?

If your business has a unique name, it can be trademarked as long as it isn’t too similar to another name that has already received a trademark. For example, if the name is too vague, like The Ice Cream Shop, it is unlikely to be eligible for a trademark. Something like Iguana Ice Cream would be more likely to receive a trademark, since it joins common words in a unique way.

It is also important to consider the geographical area you will be serving. The common-law trademark protection that you automatically receive by using the name is restricted to your immediate geographic area. If your business serves multiple states, you’ll definitely want to apply for a trademark to protect your business.

If you have several product lines within your business that also have unique names, you may want to trademark those as well. For example, Ford is a trademark of the Ford Motor Company, which also has trademarks for lines of vehicles such as the F-150, Mustang, Ranger and Explorer.

Should I get a trademark or LLC first?

Whether you should register for a trademark or an LLC first largely depends on your business goals.

A limited liability company (LLC) is a business structure classification within the U.S. that describes a private limited company. It is usually issued by the state in which the company operates, although you can receive an LLC from any state. An LLC registration usually takes less than a day to process, while a trademark takes an average of three months.

If you want to begin operating immediately, it makes sense to register for the LLC first. If you have plenty of lead time and are more interested in securing your federal rights to the name before you put it out into the world, out of fear that it may be co-opted by someone else, then it makes more sense to apply for the trademark first.

Does your business need a trademark registration right away?

Your business does not need to register for a trademark right away.

Typically, you need to be able to show “use in commerce” when registering for a mark, which means that you should be able to prove it was being used before you could register it. However, there is the option to apply for an intent-to-use (ITU) trademark.

If you proceed with an ITU trademark, you still have to demonstrate your use of the mark in commerce by completing the documentation and paying the additional fees within the allotted time frame prior to the mark’s registration.

There are only three periods within which you can claim use in commerce:

• Prior to approval for publication
• Within six months of the issuance of the notice of allowance (NOA)
• Within the time granted by an extension

You can establish use in commerce in several different ways, including the following:

• Placing the mark on your goods sold or your website for goods sold
• Using the mark in association with services being sold

There are three types of commerce under federal law:

• Foreign commerce
• Territorial
• Interstate

What is not typically acceptable is intrastate commerce, meaning business that is limited to the borders of a single state.

If your business can’t yet prove you are using the trademark in commerce, or if you won’t be able to prove it within the confines of the ICU process, there is no reason to apply for the trademark first.

If I register a business name, do I need to register a trademark?

Registering a business name is typically done at the state level and does not provide federal protection. If you are going to provide services or products only within that state, there is no reason to register for a trademark. If you are offering products and services in multiple states and want federal protection for the name of your business, though, you would need to register for a trademark.

How can you tell if someone else already has rights to a mark?

TESS makes it easy to search the federal database of trademarks in various ways. The “basic word mark search” allows you to search names, words and phrases that have received a federal trademark.

The “word and/or design mark search” allows you to use either a design or words, or a combination of the two, to search the database. However, you will likely need to know the design codes to do this effectively.

There is also the option to browse the directory or individual fields within the database. If you aren’t sure exactly what might have been trademarked but you know a general date, you can search by registration or publication date.

If your registration is accepted, how long is that registration valid?

A trademark registration is valid for as long as you are willing to maintain it. Once a trademark is issued, it does not expire as long as it remains in use for the registered purpose. 

A trademark does not grant you ownership of the word, phrase or image; it gives you the right to that word, phrase or image as it is used to identify the services or goods listed in the registration.

However, using it isn’t quite enough. You must give the USPTO proof that the trademark has remained in use by filing a Section 8 declaration between the fifth and sixth anniversary of the registration. This is a simple sworn statement.

Upon the registration’s 10th anniversary, actual proof is required. This can be an image of your product or service using the trademark. You must do this every 10 years.

Should you hire a trademark attorney?

Your choice to hire a trademark attorney to assist with your application may depend largely on your budget. At the same time, a 2013 study – the only of its kind – found that applications from trademark attorneys are 50% more likely to be approved. So the question you have to answer is this: Is it worth it to spend money on an attorney to increase my application’s chances of approval? Only you can decide that.

To trademark or not to trademark

That is the question, isn’t it? Trademarking your brand is great if you’re worried about people using it unfairly, without your permission. It’s also great if you’re expanding to operate in several states. But a trademark is never fully necessary – it just offers extra protection – and obtaining it can be a long process. That protection, though, can suggest that your business is official – and that’s a great way to build trust among customers.