Enrolling a trademark for a business name is a fairly linear process. A trademark is a word, phrase, or a symbol representing a service or a product.
This is a standard in business that serves to protect your rights, as a business entity to take legal action if someone would attempt to use it. Obtaining a trademark requires that you should have a unique mark that is not in use to identify your business.
It is common to see organizations request for an application online and with good reason; it gets the job done in around an hour or two and does not require legal representation.
Below are the steps on how to file a trademark on a business name:
This step in the process of creating a trademark is to ensure that your brand name or “mark”, qualifies the United States Patent and Trademark Office (USPTO) standards. Your mark must have distinct, unique, and non-intuitive.
There are four (4) categories in which USPTO divides marks and those that fall under the “weaker” category aren’t likely to pass the standards for trademark purposes.
The following categories are arranged from the strongest to the weakest:
Fanciful and Arbitrary. This type of mark is the strongest because it is unlikely for someone else to think and use the same, especially with Words that are made-up since they are usually not associated with a certain service or product. For example, naming a tech company as “Hai-Tekk” would be fancy and naming a liquor product “milk” would be arbitrary.
Suggestive. As the name implies, a suggestive mark “suggests” but does not specifically describe the product or service. In this category, marks aren’t as strong as the ones considered fanciful or arbitrary but you can get a suggestive trademark if other requirements are met. Good examples of this kind of trademark are Microsoft, 7-11, and Citibank.
Descriptive. Marks under this category are considered weak due to the probability that others could possibly use the same mark, making it difficult for the trademark protection to enforce. Some examples of this type of trademark are Best Buy and British Airways.
Generic. Words that fall into this category is impossible to trademark due to the fact that they are common, generic, and widely used thus, making it difficult to enforce the trademark protection. Examples of trademarks under this category are Band-Aid and Aspirin.
Once you have come up with a unique, distinct, and strong mark, make sure to double check and confirm that it’s not in use. Otherwise, using the trademark you had in mind won’t be possible if a company already has proprietary of the name.
You should start by thinking of search terms to verify the availability of your preferred trademark and place them on a list.
Using the list of search terms, you have to verify the availability of your preferred trademark, perform an online search using a search engine like google.com and take note of the products or services based on your search by writing the status. This is to confirm if the name is already in use.
Conduct a TESS Search
The Trademark Electronic Search System (TESS) search makes use of the United States Patent and Trademark Office (USPTO) records of registered applications and trademarks in searching for your company name.
Having conducted your name search to verify if a company has trademarked the name that you have in mind for business, doing so would also enable you to see the applications that have been denied and understand the reasons why.
At this point, it would be safe to assume that you may go ahead and file your application to register your business. However, it would still be good to hire a trademark attorney to ensure that your search was accurate. They can also assist you in completing the intricate processes involved in filing the aspects of your business registration that requires legal assistance.
Obtain and Fill out the Trademark Application Form
Obtaining and filling out the trademark application form can be processed online (electronically) or by mail.
In case you’re unsure which form you would need, don’t worry-The USPTO website contains detailed instructions that serve as a guide in filling out the application form.
A sample of the trademark for use on services or goods must be submitted before the final issuance of the registration.
You have to be careful in naming yourself as the owner instead of the company as your application might end up voided if the company happens to be a separate legal entity like a corporation or an LLC.
Settle the filing fee & Submit the Application
Depending on the method of filing your trademark, the fee would either be an amount of $275 or $325.
Using the USPTO website or mailing service, make sure to completely fill out the forms with all the required documents attached to your application.
The process for reviewing your application would take several months and you will receive a notification regarding your progress.
It is also advisable for you to monitor your application on the TESS database for updates and you will receive a notice when it is “allowed” and when its “published for opposition”.
Respond to USPTO correspondence & Enforce your Trademark
The United States Patent and Trademark Office (USPTO) would take some time to review applications and will send a notice for updates regarding the status of your trademark application.
Make sure to respond to USPTO notice promptly as there are instances when they make mistakes or they might simply be in need of clarification.
The USPTO is concerned about preventing others from processing a brand registration that is similar to those that are already registered.
Enforcing your trademark when it is approved is solely your responsibility otherwise, you could lose your trademark protection if others would start to use it “generically”.
You will need additional USPTO filings to maintain your registration after 5 years has elapsed from the date of issuance, and process the renewal after 10yrs.
It is also good advice to have someone run a scan TESS and the internet to prevent infringement. Use ® on your trademark if your business is associated with goods and services and use TM or ™ in using your brand on things that are not federally registered.
Do not use ® or ™ on the company name unless it is used for identifying goods or services under your brand.