When it comes to your company’s brand identity, nothing is more vital to your company than its name. By developing a highly catchy name for your business, you can quickly get your company recognized, remembered, and respected.
That said, coming up with the right name for your company involves a number of critical legal issues. After all, your name is among your company’s most valuable assets, and as such, it deserves the proper protections available under intellectual property law.
First and foremost, you’ll want to trademark your company name, which can be done by registering your business name with the U.S. Patent and Trademark Office (USPTO). However, registering a trademark with the USPTO can be a lengthy and complex process, especially if you aren’t familiar with intellectual property law.
With this in mind, while you should always work with an experienced business lawyer like us, your local Family Business Lawyer™ to officially register any trademark, here are four of the top issues to consider when choosing and trademarking your company name.
1. Registering Your Company Name vs Filing For a Trademark
You first need to understand that simply registering your business name with your state or U.S. territory is not the same as filing for trademark protection. When registering your business name in your state or U.S. territory, you’ll need to first check to determine if your chosen name, or something similar, is not already in use by another business.
From there, if your name is available, you’ll need to take a few additional steps to officially register and use your company name in your state or U.S. territory, depending on whether you are a sole proprietorship, limited liability company (LLC), or corporation. But registering your business name with your state or U.S. territory only protects the use of that name in that state or territory, so other companies may still be free to use the name in other states.
On the other hand, filing for trademark protection for your company name allows you to exclude others from using the same—or highly similar—name as yours on a nation-wide level.
Beyond that, federally registering your company name comes with a number of other benefits that we detail below.
2. How To Get A Trademark: Common Law Trademarks vs. Registered Trademarks
You actually become a trademark owner simply by being the first person to use your particular name or design in commerce. That is, your trademark—and the rights that go with it—are established by using it, not by registering it.
However, such “common-law” trademark rights are quite limited and will typically be inadequate for most companies. Officially registering your name with the USPTO provides a number of advantages, such as being able to sue for monetary damages against other companies for trademark infringement and the ability to register your name in foreign countries, among other benefits. For this reason, it is always a smart move to officially register your trademark.
3. Choosing A Name That Will Gain Trademark Protection
Unfortunately, coming up with a trademarkable name isn’t as easy as simply finding a name that no other company has claimed yet. In order to gain trademark protection, your company name must have the proper characteristics, according to the USPTO standards.
Most importantly, your name must be unique enough to distinguish yours from other trademarks already in use. To this end, the USPTO employs a spectrum of “distinctiveness” to determine trademark eligibility, using the following categories and ranging from strongest “inherently distinctive” to weakest “merely descriptive.” If you’ve already come up with a name, check to see if it falls into one or more of the following categories:
A mark that is entirely invented and has no other meaning, making it inherently distinctive. Examples include Xerox and Exxon. Such marks are the most likely to be eligible for trademark protection.
A mark consisting of a common word that is totally unrelated to the product or service being offered. Examples include Camel and Amazon. Arbitrary marks are less likely to be eligible for a trademark than fanciful marks, but still likely to be accepted.
A mark that “requires imagination, thought, or perception” in order to come to a conclusion about the nature of the products or services being trademarked. Examples include Kleenex and Q-tips. Depending on the mark, suggestive marks may or may not be unique enough to be eligible for trademark.
A mark that is merely a description of—or has a direct connection to—the good or service being trademarked. Examples include Sweetarts and American Airlines. Descriptive marks are generally ineligible for trademark protection, unless you can demonstrate “acquired distinctiveness,” which often takes years of use in the market before being available for trademark.
The bottom line: Although choosing a company name that doesn’t directly describe your product or service may seem counterintuitive, given this spectrum, using a descriptive name is going to be extremely difficult, if not impossible, to trademark. As your Family Business Lawyer™, we can support you when coming up with a name that will have the highest possibility of gaining trademark protection.
4. Make Sure Your Name Is Available
If you come up with a highly distinctive name, don’t get too excited. The next step is to make sure no competitor is already using your name—or something highly similar. While you can use Google for your preliminary search, to definitely determine if your name is available, you’ll need to check with the USPTO.
To find out whether any business similar to yours has already trademarked the name you want, you should use the USPTO’s Trademark Electronic Search System (TESS). This database contains all active and inactive trademark registrations and applications, and it can help you decide whether to file an application for your particular trademark.
Keep in mind, however, that such a search can be complicated. While searching for the exact same trademark is fairly simple, searching for marks that might be regarded as confusingly similar requires some skill. We, your Family Business Lawyer™, can ensure your search is done properly, so your registration has the highest chances of getting approved.
Enlist Our Help With Your Trademark Application
Although you can register a trademark on your own or with the help of a cheap, do-it-yourself (DIY) trademark registration service, the registration process is highly technical. In fact, the process consists of a number of detailed steps, which from start to finish, can take up to a year or more to complete. Rather than rolling the dice by trying to register your trademark on your own or with a DIY service, we recommend you save yourself the time, money, and hassle, and hire us to guide you through the process.
When you work with us, your Family Business Lawyer™ to get your trademark application handled, you will pay a flat fee that covers the entire process, from the initial search all the way to final registration, with no billable hours, hidden fees, or nasty surprises. And once you have your trademark registered, you will need to take steps to ensure your trademark rights aren’t infringed upon—and that’s something we can help with, too.
As your Family Business Lawyer™, we will not only support and advise you step-by-step through the process of trademarking your name, but also help you enforce your ownership rights should your trademark ever be infringed upon. Finally we will also support you to maximize the value of not just your company name, but all of your intellectual property assets. Contact us today to learn more.
This article is a service of The Hyndman Group, your Family Business Lawyer™. We offer a complete spectrum of legal services for businesses and can help you make the wisest choices on how to deal with your business throughout life and in the event of your death. We also offer a LIFT Start-Up Session™ or a LIFT Audit for an ongoing business, which includes a review of all the legal, financial, and tax systems you need for your business. Call us today to schedule.