What’s in a name? If you’re Shakespeare, maybe not much. However, if you’re a business owner, what goes into a name is actually quite important.
You likely put countless hours into coming up with a business name. In order to protect your business from liability and safeguard your intellectual property, you need to go through the trademarking steps to ensure that your name is secure.
In this article, we’ll discuss the definition of a trademark and the benefits of trademarking your business. Then, we’ll take you step by step through the process of how to trademark a name.
Before you start the process of trademarking a business name, check the domain name availability to ensure consistency in your digital branding. If it’s available, you can claim it for free when you sign up for a Premium Wix membership.
What is a trademark?
A trademark is a legally protected symbol, word, phrase, design or combination of these elements that represent a brand or business. In the case of trademarking a name, a trademark provides the owner with exclusive rights to use the trademark in connection with the goods or services they offer. This ensures that no one tries to impersonate your business, using your name without your permission. It also discourages other businesses in your industry from using the same name or even one that is similar.
It’s worth noting that registering a trademark with the USPTO offers stronger, nationwide rights than a common law trademark, which only applies to your geographic area.
The benefits of trademarking your business name
There are a few notable benefits of trademarking a business name:
Own exclusive rights: When you own the rights to your name, you can control how others are allowed to use your name and take legal action if it’s used in an unauthorized way. This means that no one else can use the same or similar name for similar goods or services without your permission.
Attract investors: When you’re starting a business and need to raise capital, a trademark can help to instill confidence in your business. Investors like to see that you’re building a unique reputable brand and taking steps to protect it. Plus, trademarking a name not only protects businesses from lawsuits that can quickly drain funds, but doing so also makes it easier to license and franchise your business which signals to investors that there are expansion opportunities. A trademark also shows them that you are serious about this business venture and that you would be a responsible business partner.
Strengthen your brand: A trademark helps to establish your brand identity, making it easily recognizable by both its name and aesthetics. For that reason, it’s useful to include the logotype (a type of logo that features a brand name in a stylized typography) in the trademark registration. Think of big brands like Ikea or Coca-Cola: Just seeing the name likely makes you think of their iconic logotypes, including the font and color scheme. When you trademark a business name and a logotype together, you ensure that the styling has the same legal protection as your name.
Expand your business: As your business grows, having a registered trademark can make it easier to break into new markets. You can protect your brand from infringement, while differentiating yourself from the competition.
Protect your business from legal action: The primary benefit of trademarking a name is that it provides your business and its name with legal protection. If someone tries to use it, you can take legal action against them. If you don’t trademark a name and another business with a very similar name does, they could take legal action against your business.
How to trademark a business name in the U.S.
Here, we’ll go over seven steps you’ll need to go through to have a trademark approved by the United States Patent and Trademark Office (USPTO). Read through these tips carefully before starting your application to avoid making errors that could cause delays in the approval process.
Figure out if your business name is eligible for a trademark
01. Consider if your business really needs a trademark
Trademarking a name is not something that happens overnight. In fact, the USPTO says the process usually takes between 12 and 18 months. For that reason, it’s important to first determine whether trademarking a name is necessary for your business before you invest time into filing your application.
If you have limited financial resources or you don’t have any intention of expanding your business beyond a local area, you can deprioritize the trademark registration on your unwieldy to-do list.
02. Search the trademark database
Enter the name you want to trademark into the USPTO Trademark Electronic Search System to determine if it’s available. This database contains all registered and pending trademarks in the U.S. If your name is on that list, then you’ll need to go back to the drawing board.
If you don’t find your chosen business name in the TESS database, search for similar names. You can use a variation on the spelling or similar words to see if there’s another business with a name that’s close to yours. If you spot a business in your industry with a similar name, your trademark may be rejected. For example, if you tried to trademark the name “Mack Donald’s,” the USPTO may think it’s too similar to the existing “McDonald’s” trademark and reject your application.
03. Figure out if your business name is eligible for a trademark
Even if you don’t find the name you want to trademark in the USPTO database, it may still be ineligible for a trademark. The USPTO has specific requirements for a trademark registration that range beyond the existence of a similar business name trademark. For example, the name can’t be deceptive, immoral or overly generic. We’ll discuss more issues that may make your business name ineligible for a trademark further into the article. If you are unsure if your business name is eligible for a trademark, consulting with a trademark attorney can help clarify your options.
04. Determine what type of trademark you need
There are two trademark types that are relevant to the process of trademarking a name: a standard character mark and a special form mark. The type of format you choose will determine your filing requirements.
A standard character mark (often referred to as a “word mark”) is a regular trademark of a name in plain text form. It’s the most flexible way to trademark your name as it protects your business name regardless of how it’s presented stylistically.
With a special form mark (often referred to as a “design mark”), you’re seeking protection over a mark that uses specific design elements, such as fonts, colors or additional designs. For example, the name ‘Pepsi’ along with the brand’s circular logo would be considered a special form mark. The benefit of this type of mark is that you can protect both the wording and the design.
05. Choose the appropriate trademark classification
Trademark classifications (a.k.a. classes) are used to categorize different types of goods and services for trademark registration purposes. The USPTO recognizes 45 classes of goods and services, 34 of which are goods and 11 of which are services. This classification process helps the trademark examiner determine whether there are any conflicting trademarks in the same class.
It's important to choose the correct class (or classes, if your business qualifies for more than one) for your trademark application, as the USPTO will not allow you to change the classification once your application has been submitted. If you choose the wrong class, your trademark registration may be rejected or may not provide adequate protection for your goods or services.
Additionally, the class or classes you select for your trademark application define the scope of protection. Therefore, using the trademarked name in a circumstance that’s irrelevant to its classification, the usage might not be protected. Let’s say Ulta (a chain of beauty stores) wanted to have an annual music festival. They might not be able to call the festival “Ulta Music Festival” because “Ultra Music Festival” is already trademarked.
It’s worth noting that the class or classes you select in your trademark application define the scope of protection for your trademark. This means that if you use your trademark in a context that's outside the scope of the selected classes, it may not be protected. For example, let's say the beauty store chain, Ulta Beauty, wants to host an event called "Ulta Music Festival." Although the company owns the trademark for “Ulta,” it’s registered in a retail store services class. Therefore, it may not be able to use their preferred name because it’s quite similar to the “Ultra Music Festival” trademark, which is registered in the entertainment services class.
That’s not to say that you should trademark your name in a bunch of different classes. With every class you select on your application, you will an additional fee of $250. Therefore, registering a trademark in multiple classes can be quite expensive.
06. Determine your basis for filing
When trademarking a name, you need to determine the filing basis (or filing bases, if more than one applies to your situation) for your application. A filing basis establishes your right to register the trademark and determines the basis on which you are claiming ownership of the name. The trademark application provides four filing bases for you to choose from:
Use in commerce: Your name is already being used on products or services available to the public.
Intent-to-use: Your name isn’t yet being used, but you can demonstrate that you intend to use it on goods or services in the near future.
Foreign registration: When applying for a trademark with the USPTO as a foreigner, this indicates your mark is currently in use in a different country for the same goods and services.
Foreign application: You have already filed for a trademark in a foreign country and are now filing in the U.S. within six months of your initial application so that both can be approved within a similar timeframe.
The basis for filing determines when the trademark registration will become effective. Use in commerce, foreign registration and foreign application require proof of use or registration. On the other hand, intent-to-use allows you to reserve the trademark for later use.
07. Choose the right application for your purposes
Once you have all the information you need to submit your application, you can begin to file for a trademark. You’ll need to sign up for an account with USPTO.gov in order to access the online filing system, called the Trademark Electronic Application System (TEAS).
Because the process of trademarking a name is somewhat tedious, the USPTO offers a streamlined version of their standard application. The TEAS Plus filing option application is for businesses who can confidently answer all of the required questions.
Choosing this option not only increases the likelihood that your application will move through the process more quickly, but also decreases the filing fee from $350 to $250 per class of goods/services. If your application doesn’t meet all the requirements, your application will revert to the TEAS Standard application and you will have to pay the extra $100.
Upon submission, you’ll get a confirmation and a serial number to reference your application and check on its status. A government patent attorney will review it and determine whether to approve your name trademark. This part of the process can take a few months, so don’t worry if you don’t hear back soon after you file your application.
What to expect after filing
If the examining attorney raises any questions or issues with your application, then you’ll have an opportunity to respond to office actions and make changes to your application. Note: this can add several more months to the process.
Once the USPTO approves your initial application, the department will publish the trademarked name in the Official Gazette, a weekly publication announcing new trademarks. Third parties have 30 days to contest your trademark. If the USPTO doesn’t receive a valid complaint, they will issue the trademark for your name.
However, keep in mind that you’ll want to continuously maintain your marks even after they’re issued. Federal trademark registrations last for 10 years. However, you can keep your trademark active by regularly filing maintenance documents and paying maintenance fees. You’ll also need to demonstrate that you’re continually using your trademark because trademarks that aren’t used for an extended period of time can be canceled or abandoned.
It’s worth noting that once your trademark is active, it’s up to you to enforce it. Organizations such as the USPTO provide business owners with the rights and legal grounds to pursue legal action in the event of infringement, but they won’t take action on your behalf.
It’s also important to know that registering a business name is a separate process that you’ll need to attend to after trademarking it.
4 common reasons trademarks get rejected
Let’s discuss a few common issues with trademark applications and how to avoid them. (For a full list of issues that are grounds for refusal, see the USPTO’s application checklist.) In the event that your application is rejected, you may file an appeal with the Trademark Trial and Appeal Board or start over with a new trademark application.
01. Your trademark is similar to an existing trademark
If your trademark is similar or identical to an existing trademark or company name, then the USPTO will likely reject your application. For example, if you try to trademark the name “Wall Mart,” the USPTO will likely reject your application for being too similar to the registered trademark “Walmart.” Even if the existing trademark is for a business in a different industry, the USPTO may reject the trademark if it’s likely to confuse consumers.
02. Your name is improperly descriptive
The USPTO may reject your application if it determines that the proposed mark misleads consumers about a quality or feature of the goods and services you offer. For example, if your name includes the word “organic” in it but the products are not organic, then the USPTO may consider the name to be deceptive or misdescriptive.
The USPTO may also reject your application if you’re trying to trademark a generic descriptive term as it would put other businesses at an unfair disadvantage. For example, if you wanted to call your beverage business “Juicy,” the USPTO may deny your application.
To avoid either circumstance, make sure that the name you want to trademark is original, accurate and doesn’t rely too heavily on descriptive terms. Study the best company names or use Wix’s business name generator for help thinking of a name that’s both relevant to your business and memorable.
03. Your trademark is a surname
The USPTO may reject your application if the trademark consists of a surname that has no other meaning or significance besides identification of a person or family. So, they would likely reject my application if I tried to trademark my surname “Shwake.” However, they may accept my application if people already associate my surname with the products or services I’m selling.
If the trademark you wish to register is purely ornamental, as in a design including a symbol or words on clothing rather than the name of your business, it’s likely to be rejected. The trademark needs to serve a purpose by indicating a brand or business and can’t be purely decorative.