When most people start a business, they tend to put off legal issues until other things have been dealt with. Business owners know that legal issues will require the services of a lawyer, which can be both expensive and intimidating. But the truth is that some legal issues regarding your new business should be dealt with from the start and trademarking your business name is just one example.
Many of the entrepreneurs we talk to, spend a lot of time and money coming up with a unique brand name or logo or slogan, but then they skip the important step of actually protecting it. It is easier than you might think for someone to claim your idea as their own. The first step is to register your trademark. This article outlines the six necessary steps you will need to take to trademark your company name.
What Is the Difference Between a Company Name and a Trademark?
Registering your business name and filing for a trademark is two distinct processes that create different rights. You registered your business name when you filed Articles with the Secretary of State to create a new business entity. The Secretary of State checked to make sure the business name you chose was distinguishable from the business names already registered in Ohio. It’s important to note, however, that registering your business name with the state will only protect your business name here in Ohio. Businesses in other states might still use the same or a similar name. And, the Secretary of State’s standard for whether a name is “distinguishable” is an incredibly low bar, especially compared to the standard that is applied when registering for a federal trademark.
A trademark on the other hand is a word, slogan, symbol, design, or color that identifies the source of a product or service. Think about some of the more famous name brands out there: Google, Walmart, Microsoft, and so on. Trademark owners have the right to prevent others from using similar marks that could cause confusion in the marketplace and lead to unfair competition.
Does a Business Have to Register its Trademarks?
Technically, trademark registration is not a requirement, but it does provide a number of important benefits, including:
How to Trademark Your Company’s Name
Before trademarking your company’s name, you should review the helpful information provided by the U.S. Patent and Trademark Office (USPTO) website, including their explanation of Trademark Basics. The USPTO provides detailed explanations and answers some commonly asked questions, such as:
Step 1: Decide on a Distinctive Mark
If you want to trademark your company name, your first need to make sure that it isn’t “confusingly similar” to trademarks that are already being used. You can do this by searching the USPTO’s Trademark Electronic Search System (TESS). A trademark search involves looking for similar trademarks that are already in use on related goods or services. If the USPTO determines that your proposed trademark is too similar to a mark that is already registered, then your application will be refused because of a “likelihood of confusion.” If that happens, the USPTO will not refund your application fee, which is why it’s a good idea to have an experienced trademark attorney conduct the search for you.
A good search will also look for unregistered trademarks that might have been in use before you. These “common law” trademarks have some limited rights to continue using their mark, even if your company is the first to file.
The goods and services you associate with your mark should also be clearly identified. Your trademark rights are based on the goods or services you list on your application. If you provide other goods or services that are not covered in your application, then others might be able to use a similar trademark on those things that your application didn’t cover.
Step 2: Get Your Application in Order
Before filing your application online, you need to (1) determine how many trademarks you are applying to register, and (2) identify the goods and services associated with each trademark. The USPTO charges a fee (usually $250) per trademark and per class of goods or services.
First, how many trademarks are you registering? Each name, slogan, and logo is its own separate trademark and will require its own application. Because logos and marketing slogans change over time, many small businesses will start their trademark portfolio with their company or brand name. Read more about what to trademark first: your name or your logo.
Next, what goods or services are associated with your trademark? The USPTO divides every product or service in the world into 45 classes and charges the registration fee per class. So if you’re launching a t-shirt line (class 25 – clothing) and also selling face masks for the pandemic (class 10 – medical products), then you’ll pay the registration fee twice.
Step 3: Follow Up on Your Application
Once your application is filed, the review process begins. The USPTO will assign an examining attorney to review your application, and this tedious process can take several months to complete. You can find the current processing wait times here. The examining attorney must conduct their own trademark search to make sure that your proposed trademark isn’t “confusingly similar” to trademarks that have already been registered. If the examining attorney finds any issues with your application, they will issue an Office Action requiring you to answer additional questions or file additional documentation within a certain period of time. Keep tabs on the application and needed updates by visiting the USPTO’s Trademark Status & Document Retrieval website. This is where you can monitor your application and respond to requests; if you miss a deadline, you might have to start all over again (and pay again), so it’s crucial to keep abreast of this process.
Step 4: Wait While Your Mark is Published and Finally Registered
Once any outstanding issues that were raised by the examining attorney have been resolved, the USPTO will approve the trademark. It will be published in the Official Gazette, which the USPTO publishes weekly. Any party that believes your trademark will infringe on their own has 30 days to file an objection. If opposing paperwork is filed, the USPTO’s Trademark Trial and Appeal Board (TTAB) will review the case. If no one opposes your filing, you will either get a certificate of registration or a notice of allowance. The notice of allowance occurs if you haven’t yet used the trademark, but intend to do so. You’ll have six months in this case to file a Statement of Use. Once it’s been in use, the USPTO will register your mark, and then you’ll receive the certificate of registration. When the registration is complete, you may begin using the registered trademark symbol ® next to your trademark.
Step 5: Maintain Your Trademark
It’s crucial that you maintain your registration, including the filing of maintenance documents with the USPTO. Anytime you have an owner or contact information changes, you need to update the USPTO.
Keep in mind that the USPTO does not enforce your trademark rights; this is your responsibility. If your trademark is infringed upon, and you do not enforce your trademark as the owner, you could lose it.
Learn more about enforcing your trademark rights.
The Hidden Costs of Failing to Register Your Business Name as a Trademark
If you are using a brand name that you don’t own as a federal trademark, then your common law rights are limited to your geographic area—a problematic and outdated concept if your business operates primarily online. This might sound okay now, but as your business grows and expands, you might find yourself literally boxed in by other businesses that did preserve their rights by registering their trademarks.
And without registering your trademarks, it’s nearly impossible (not to mention absurdly expensive) to try to protect your marks and prosecute a case for trademark infringement.
Finally, since your trademark is unregistered, you could discover that you are infringing upon someone else’s trademark. The law assumes you know what’s already registered. So not only will your company be liable for trademark infringement, but you’ll also have the expense of rebranding.
The truth is that new business owners—and even some who have been around for a while—don’t fully realize the ramifications of not registering their trademarks. It’s worth the extra effort and expense from the onset of your business to avoid problems down the line, particularly if your future business plans involve expansion or investment funding.
If you have any questions about the trademark process or protecting your company’s valuable intellectual property, then please schedule a consultation below.