How to Trademark a Brand Name

Wednesday, September 14, 2022
How to Trademark a Brand Name

Trademarking a name is an essential step in creating and protecting a brand. It is estimated that more than 600,000 businesses open each year in the United States, and many of those businesses will choose to trademark their name. The process of trademarking a name is relatively simple and can be done online or through the mail.

However, trademarking a brand name can be a bit overwhelming for those new to the process. This guide will provide some tips on how to trademark a brand name.

What is a Trademark?

Before you begin the process of trademarking your brand name, it is important to understand what a trademark is and what it can do for your business. Trademarks are a word, phrase, symbol, or design that identifies and distinguishes the origin of the goods or services. It may also be a service mark, which is a trademark used to identify and distinguish one company's services from those of others.

What are the Types of Trademarks?

There are four types of trademarks that can be registered with the USPTO:

Descriptive Mark

A descriptive trademark is a word or phrase describing the goods or services a company offers. For example, "Best Buy" is a descriptive trademark for an electronics store. Descriptive trademarks can be difficult to protect because they are not considered to be inherently distinctive. However, if a company can prove that its descriptive trademark has acquired a "secondary meaning," then it may be able to obtain protection. Secondary meaning occurs when the public associates the trademark with a particular company. In order to prove secondary meaning, a company would need to show that consumers widely recognize its trademark and that it has been used for a long period of time.

Suggestive Mark

A suggestive trademark is a type of trademark that suggests, rather than directly describes, the characteristics or features of the goods or services it is intended to represent. Suggestive trademarks are typically less powerful than so-called "arbitrary" or "fanciful" trademarks (which directly refer to the goods or services in question) but are more easily protectable than descriptive trademarks (which describe a particular feature of the goods or services).

In order to be eligible for protection, a suggestive trademark must be sufficiently unique and distinctive to serve as an identifier of the source of the relevant goods or services. For example, "Coppertone" is a suggestive trademark for suntan lotion. While the mark does not directly describe the product, it nonetheless evokes the notion of a tanning agent. Similarly, "Tide" is a suggestive trademark for laundry detergent; while the mark does not directly describe the product's function, it nonetheless implies that the product can be used to cleanse fabric.

Under U.S. law, suggestive trademarks are entitled to a presumption of distinctiveness, meaning that they are presumed to be valid and entitled to protection absent clear evidence to the contrary. As such, suggestive trademarks can be an important tool for businesses seeking to establish their brand identity in the marketplace.

Fanciful Mark

A fanciful type of trademark is made-up or coined, as opposed to an existing word or phrase. An example of a fanciful trademark is "Kodak" for cameras and film. Fanciful trademarks are often very strong because they are not only unique but also highly suggestive of the particular product or service.

As a result, they are often quite easy for consumers to remember and associate with the company in question. Unfortunately, although fanciful trademarks can be very effective, they can also be difficult to register due to their lack of preexisting recognition.

Nevertheless, many companies have found that the benefits of a strong fanciful trademark outweigh registration challenges.

Arbitrary Mark

An arbitrary trademark is a type of trademark that consists of a word or phrase that has no connection to the goods or services it is used to identify. An arbitrary trademark is, therefore, not descriptive, and it is not suggestive.

An example of an arbitrary trademark would be APPLE for computers. The word "apple" has no connection to the product, but it is still a strong and distinctive mark.

Arbitrary trademarks are some of the most powerful and valuable types of trademarks because they are both highly distinctive and completely unrelated to the products they identify. As a result, they are very difficult for competitors to imitate or copy.

How to Trademark a Brand Name in 3-Steps

Now that you understand what a trademark is and what it can do for your business, you are ready to begin the process of trademarking your brand name.

Trademark Search

The first step in securing a trademark is to conduct a search. This will help you determine if your proposed trademark is available for use and whether it infringes on the rights of another company. You can conduct a search online or through the USPTO's Trademark Electronic Search System (TESS).

It's important to note that even if your proposed trademark is not identical to another company's mark, it could still be considered infringing if it is too similar. For this reason, it is always best to consult with an experienced trademark attorney before moving forward with your application.

File a Trademark Application

Once you have conducted a search and determined that your trademark is available, you are ready to file a trademark application with the USPTO. The application must include:

  • The name and address of the person applying
  • The applicant's citizenship and legal status
  • The name and address of the person to whom future correspondence should be sent. (This can be different from the applicant's name.)
  • A depiction of the mark you wish to have (if you are only applying for the name and don't want to include a design element, simply type in the name)
  • A full description of the mark
  • A description of the services or items to be protected by the trademark application
  • The goods or services on which the mark will be used
  • The date that the mark was first used, along with an example of it in use.
  • A dated signature from you or a legal representative
  • The fee for the number and type of classes on the application

After the USPTO receives your application, they will assign it to an examining attorney. The examining attorney will review your application to ensure that it meets all the requirements and does not conflict with other marks.

The USPTO will publish your mark in the Official Gazette if everything is in order. This allows other companies to oppose your trademark. If no one opposes your trademark, or if you can overcome any opposition, your mark will be registered.

Monitor Your Trademark

After your trademark is registered, it's crucial to keep an eye out for anyone using it without your permission. You can do this on your own or hire someone to help you. The USPTO also provides a monitoring service if you'd like to use that instead.

You can file a complaint with the USPTO if you believe your trademark is infringed upon.

You will then need to provide evidence of the infringement, such as how the infringing mark is being used and how it is causing confusion for consumers.

If the USPTO agrees that there is an infringement, they will send a cease and desist letter to the infringing party. If the infringer does not comply, you can file a lawsuit.

You can also file a lawsuit without going through the USPTO, but this is often more costly and time-consuming.

Enforcing your trademark rights is important to protect your brand and maintain your competitive edge.

Should You Trademark Your Company or Brand Name?

Trademarking your company or brand name is important to protect your business. It can help you build a strong brand and maintain your competitive edge.

However, to deem if trademarking your company or brand name is right for your business, you should consider the following:

The Costs Associated with Trademarking Your Name

Trademarking your name can be costly. The filing fee for a trademark application is $275 per class, and you will likely need to hire an experienced trademark attorney to help you with the process. This can add up to several thousand dollars.

The Length of the Process

The trademarking process can take several months, or even a few years, to complete. So, trademarking your name may not be the best option if you are looking for immediate protection.

The Scope of Protection

A trademark only protects your name in the class or classes it is registered for. So, if you plan on using your name in multiple businesses or industries, you will need to register it in each class.

The Notoriety of Your Brand

If your brand is not well-known, it may be more difficult to enforce your trademark rights. This is because you will need to show that consumers are likely to associate your name with your business.

The Strength of Your Name

A strong name is one that is unique and not descriptive of the goods or services you offer. For example, a name like "Best Coffee" would be considered descriptive and would not be entitled to full trademark protection.

The Time and Effort Required to Monitor Your Trademark

Once your name is trademarked, you will need to monitor it for infringement. This can be a time-consuming and costly process. This is a vital consideration if you are thinking about trademarking your name.

Whether You Are Willing to Take Legal Action to Enforce Your Trademark Rights

If you are not willing to take legal action to enforce your trademark rights, then trademarking your name may not be your best option. This is because it can be difficult and expensive to enforce your rights without taking legal action.

How Much Does It Cost to Trademark a Name?

The expense to trademark a company name begins at $225 per class and rises to $600 per class. This is the fee to submit your trademark application to the USPTO. The quickest and most cost-effective method of registering your trademark is through the Trademark Electronic Application System (TEAS) on the USPTO's website. Remember that you may only have one mark registered with each application.

There are several distinct types of trademark applications, each with its own set of expenses:

  • TEAS Plus: $225 per trademark class.
  • TEAS RF: $275 per trademark class.
  • TEAS Regular: $400 per trademark class.

Separate paperwork must be submitted for each new mark, as stipulated by the United States Patent and Trademark Office (USPTO). When applying for a federally registered trademark, you must select from among the USPTO's pre-approved trademark classes. You must also pay the per-class filing charge in advance and agree to communicate exclusively with the USPTO via email and the internet TEAS system.

The first distinction between eSTeAS RF and eSTeAS is that you don't have to select your goods and services ahead of time with the latter. However, if you believe your trademark doesn't fit well into one of the existing classes, you can ask for a custom class of products or services.

The most costly program, TEAS Regular, is available to applicants who wish to have custom courses and receive paper correspondence from the USPTO attorneys assigned to their case.

Remember that USPTO filing fees vary from time to time, so double-check before you begin trademark registration.

Additional Costs of Trademarking a Business Name

In addition to the USPTO filing fees, you can expect to spend $1,000 to $2,000 on a trademark attorney. The costs of searching for and clearing your mark can cost an additional $500 to $1,500.

You will likely incur other miscellaneous fees along the way as well. For example, filing for a trademark is a legal process, so you can expect to pay for things like certified mail and long-distance phone calls.

The total cost of trademarking a business name can range from $2,225 to $4,100. These costs can seem daunting, but remember that a federally registered trademark can last indefinitely as long as you renew it every ten years.

Choosing More than One Trademark Class

You may want to register your name in more than one class if you offer a variety of goods and services. The USPTO recognizes 45 different classes of products and services.

The most common classes are:

  • Class 9: Electrical and scientific apparatus
  • Class 14: Jewelry
  • Class 16: Paper goods and printed matter
  • Class 25: Clothing
  • Class 35: Advertising and business
  • Class 41: Education and entertainment

Allegation of Use

After you file your application, the USPTO will review it to ensure it meets all the requirements. Once your application is accepted, it will be assigned to an examining attorney.

The examining attorney will search for similar marks that are already registered or pending registration. If the attorney finds any conflicting marks, he may refuse to register your mark.

You will be given an opportunity to respond to the examining attorney's office action. If you can't overcome the objections raised in the office action, your application will be abandoned, and you'll have to start the process over again.

International Trademark Registration

You may want to register your trademark internationally if you do business in more than one country. The Madrid Protocol is an international treaty that allows businesses to register their trademarks in multiple countries with a single application.

The Madrid Protocol is administered by the World Intellectual Property Organization (WIPO) and currently has 96 member countries. If you decide to register your trademark internationally, you'll need to file a separate application with the USPTO and pay the required fees. However, you can file an international application online through the WIPO's website.

The costs of filing an international application vary depending on the number of countries in which you want to register your trademark. For example, the filing fee for one country is $325, and the fee for three countries is $975.

You can file an international application without a U.S. trademark registration, but you'll need to have a registration if you want to file an opposition or cancellation proceeding against another business that's using your mark without permission.

Responding to Trademark Office Actions or Oppositions

If you receive an office action from the USPTO or opposition from another business, you'll need to respond within six months. If you don't respond, your application will be abandoned, and you'll have to start the process over again.

If you receive an office action, the examining attorney will likely require you to make changes to your application. For example, you may be required to:

  • Disclaim any unregistrable parts of your mark
  • Amend your description of goods and services
  • Submit a new drawing of your mark

If you receive opposition from another business, the opponent will have to file a notice of opposition with the USPTO. The notice must include a statement of the grounds for opposition and a copy of the registration or application that is the basis for the opposition.

You'll need to file a notice of appearance with the USPTO and serve it to the opponent. You'll also need to file an answer to the notice of opposition.

If you can't reach an agreement with the opponent, your case will go to trial. The Trademark Trial and Appeal Board (TTAB) will conduct the trial. The TTAB will decide whether your mark can be registered. Your mark will be registered if the TTAB finds it in your favor. If the TTAB finds against you, your mark will not be registered.

Conclusion

Protecting your brand is essential to the success of your business. Registering your trademark is one way to do that. However, the process can be complex, so it's important to understand all the steps involved before you start. If you have any questions about how to trademark a brand name, you should contact an experienced trademark attorney.

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