If you are going into business, do you need to trademark your company (or business) name, or the name of your products or services?
The answer depends on a number of things, so there’s really no right or wrong answer, without examining the context of your business.
How would you answer these questions?
- Is your name and/or logo distinctive (instead of descriptive)?
- Is it possible competitors may eventually try to unfairly compete against you, by using your name?
- If a competitor started using your name, would you be upset by that?
- Do you have instances where customers (or the public) is confused between you and another business?
- Is it possible another business could be using a “confusingly similar” name to yours, before you started using it?
If you’ve answered “yes” to any of these questions, then you should consider a trademark. But, before you move forward, there are some things you need to know about.
Is Your Name Trademarkable?
Assuming you want to move forward with protecting your name and/or logo, you need to ask yourself whether your mark is actually something that can be trademarked.
If you’re not sure, this is where you should really consult with a trademark attorney.
There are many reasons why you may not be able to trademark your mark. One of the reasons is it’s simply not available because someone else is already using a “confusingly similar” mark (read the next step about this).
Another big problem for many people include using a name or mark that is not distinctive, but descriptive. Think of “Chicago’s Best Hot Dogs” for a hot-dog stand. This would be descriptive, and you cannot trademark that. Any words in the dictionary being used as they are defined (i.e. “elevator” for an elevator company is descriptive, while “elevator” for a computer company would be distinctive, not descriptive).
If you have descriptive words in your name, cross them out and pretend they aren’t there. What’s left? If nothing, then you have a problem. If you still have some distinctive elements to your mark, then you may be okay.
Other problems include being misdescriptive, surnames, profane (although the USPTO has backed off on this), illegal content (i.e. cannabis-related products and services still cannot be trademarked), misrepresentative, likely to cause confusion, and many more.
Is Your Name Available?
The second step is to evaluate whether the name (or logo) you want to use is available, which means there isn’t someone else already using a “confusingly similar” trademark to your own.
This is actually very hard to figure out. You don’t just want to look for the same name, but similar names. Similarity in US Trademark law means other trademarks that are similar in sound, look, meaning or context for similar (not same) products or services.
This means that if your name as an “ate” in it, you should also look for names with “8” in it. If a word in your name has a translation in another language, you should look for those, too. You should also look at synonyms.
Many law firms can provide what’s called a “knockout search”. L4SB calls this a trademark assessment. It can help you spot problems, before you actually spend the money (and the time — it can take up to 6-7 months just to get word back) in registering a trademark.
The report generated by a knockout search can be very confusing. It’s not very likely anyone can help you interpret it, other than a qualified trademark attorney. If you are in the clear, then you can use your name and you can trademark it. If you are not in the clear, then you should consider coming up with a new name and/or logo — because even if you don’t go forward with a trademark, someone else with a confusingly similar trademark to yours can come after you for trademark infringement. Trademark infringement is expensive and very problematic. If you are sued for trademark infringement and you lose, you could be on the hook for attorneys fees, lost profits, disgorging profits (i.e. given them what you made) and more.
This is the benefit to having a properly licensed trademark: The law gives you a big stick to shake at potential infringers.
Register Your Name (or Logo)
Assuming you’ve done a complete knockout search, and you feel you’re in the clear, then you should register your trademark.
Note that this is a bit of work to get right, and there are some things you should know about our competition who are not trademark attorneys: There is over a 80% rejection rate when you hire anyone other than a trademark attorney to help you with your trademark. Why? Because it’s easy to answer the questions on the trademark application the way you think they should be answered, but it’s very hard to answer those questions the way they really need to be answered.
There are several things that are difficult to do, to submit a trademark application properly.
First, are you currently using the mark or do you intend to use the mark? If you are intending to use, you can file what’s called an “Intent-to-Use” (or ITU). If you are successful in your trademark application, you will need to submit a “Statement of Use” (or SOU) or an extension within 6 months. If you are using your trademark, or you are submitting a SOU, you need to submit specimens, and the United States Patent and Trademark Office (USPTO) has very specific requirements on what a specimen is and what it shows. If you don’t meet their requirements, they will refuse your trademark application by issuing an “Office Action”.
Second, what are your products and services? You need to figure out your class codes, and each class code increases the cost of the trademark application. More class codes are good, in that they will increase the odds of your trademark application being approved (because if the USPTO has a problem with a class code, you can issue a divisional to split the trademark application to permit the other class codes to proceed), and more class codes expands the scope of your trademark. Conversely, aside from increasing the costs, more class codes can also bump you up against pre-existing trademarks. It’s a tight balance you need to consider. Also, are you using a trademark in one or more class codes today, but want to expand into other class codes later? You may want to file a mixed trademark application, where some class codes are currently used and others are ITU.
Class codes are confusing for many clients, because it’s not what you are doing with your mark (i.e. placing in social media and/or advertising), but what your mark means. For example, if I say “Rolex” what do you think? Watches? Hopefully. Do you think “advertising company” or “social media” company? Hopefully not. Same with you, unless you are truly an “advertising company” or “social media” company, and if you are, are you doing it for third-parties — is that your business model?
Note that registering a trademark used to take the USPTO approximately 3-5 months to review, but in 2021, they started dealing with large backlogs and it’s now taking 6-7 months. This is a long time to wait, so it helps to do that “knockout search” to help you filter out names and logos that have a high risk of refusal.
