Business Naming and Branding (Trademark)

Guide to Protecting Your Business Name or Logo in the U.S. (Trademark)

Photo by César Viteri on Unsplash

This is part of our Guide to Laws for Business Owners and Entrepreneurs.

In order to protect your business name and prevent other people from using it, you will need to know a bit about “trademark law.”

Trademark is often confused with patent and copyright law. See our Guide to Intellectual Property to help sort it all out.

What are the basics about trademark law?

When a business develops a name, symbol, tagline, logo (“mark”) that is or will become associated with its products or services, that mark may be able to obtain protection as a trademark, if it meets certain criteria. This means that you would potentially be able to prevent others from using the name, but only with regard to your products or services, or closely related products or services.

What is a service mark?

A service mark (“SM”) is simply a trademark that applies to services, rather than goods. However, it doesn’t matter much whether you call it a service mark or a trademark, and most people simply use the term trademark for both goods and services.

Do I need to get a trademark in order to use a business name or logo?

No. As long as nobody else is using the business name or logo for similar goods or services, you can use it at any time without needing to register a trademark. Trademark simply protects against the use of the mark by others.

How do I get a trademark?

Simply by using the mark in business, you could potentially establish a “common law” trademark. You don’t necessarily need to register or do anything else.

You can strengthen your common law trademark by inserting ™ next to your mark, and by clearly stating in all documentation that you intend to protect your common law trademark.

But to get even stronger protection for your trademark, you should register.

Should I register my trademark? What are the benefits of registering?

The simple answer is: probably. The more complicated answer is that it can be a difficult process and costs some money. So talk to a lawyer.

If you do not register your trademark with the US Patent and Trademark Office (USPTO), you would only have common law trademark rights. This applies only to the geographic area in which you do business.

Benefits to registering your trademark:

  • Protection across the country
  • Easier to sue for infringement and get more compensation from infringers
  • Once registered, you can use the ® mark which can gives people notice that you intend to enforce your trademark rights.
  • If you sue for trademark infringement and win, the other party must reimburse you for your attorneys fees.

How do I register my trademark?

You will first need to determine which “class(es)” your goods or services fall under. There are 45 classes, covering everything from clothing to food items to educational services. Then file an application at the USPTO website under those class(es). Again, this can get complicated, so if you are not sure what to do, talk to a trademark lawyer.

How much does a trademark cost?

Establishing a “common law” trademark (see above) is essentially free, unless you get a lawyer to help you. Registering a trademark with the USPTO generally costs at least $225 or $275 in filing fees PER CLASS (see above), plus if you get a lawyer to help it can be an additional $500-$2000+ in legal fees.

How do I make sure I don’t infringe on someone else’s trademark?

Search. Everywhere. Start with the USPTO.gov TESS database. But also Google thoroughly. But even doing these, there’s no guarantees, as someone could potentially come out of the woodwork and claim they have been using the name since before you were even born.

If I register or establish a corporation or LLC with the state, does that give me rights to the name?

Not necessarily. Filing of articles of incorporation setting forth your corporate name does not in and of itself authorize the use of the corporate name if another person or corporation previously acquired rights to the use of the name. The most important factor is who used the name first with the particular (or closely related) goods or services.

Is a trademark the same as a trade name?

No, a trade name is an alternate name for your business, which does not necessarily give you rights to the name. See more about DBAs and trade names.

Does filing a DBA or trade name give me rights to the name?

Not necessarily. Again, the most important factor is who used the business name first. See more about DBAs and trade names.

If I registered a domain or URL, does that give me rights to that name?

Nope, not necessarily. In fact, if you are withholding a domain that someone else has the trademark rights to, this could be considered “cybersquatting.” See our Guide to Laws about the Internet for more.

Can I trademark my name?

You cannot register a trademark that is “primarily a surname” (last name), or simply a first and last name, UNLESS it has become well-known (such as celebrities). That is, it must acquire distinctiveness.115 U.S.C. §1052(f)

If someone has trademarked my personal name, am I still allowed to use my own name?

You can use your personal name (like John Doe) to identify yourself, but if someone else has trademarked “John Doe,” you can NOT use it in commerce with the same goods or services that are trademarked.

Can I trademark vulgar or possibly offensive words?

As a result of recent Supreme Court decisions, trademarks now cannot generally be refused simply because they include vulgar, “scandalous,” or even potentially offensive words or messages.

Get Trademark Help

See options for getting legal help on trademark issues.

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