If you are considering applying for federal trademark registration on your business name, there a few things you want to keep in mind, before you start advertising.
Note: Advertising agencies tell everyone to use descriptive business names. If the intent is to use the business name as a trademark and apply for trademark registration in the USPTO, then do not use any words that describe your product or service as your trademark. Descriptive marks are by definition, not trademarks that are capable of federal trademark protection. Trademarks indicate the source of goods or services and do not merely describe the product or service itself, or the attribute of the products or services. Unique marks are the best and easiest trademarks to protect.
1. Check Your State's Business Name Registry
If another entity has registered your business entity name in your state, it doesn't make sense to use that name. Could you successfully apply for a trademark registration? Yes. Will, the trademark application process, cost you a lot more than if you chose an original name? Absolutely. The USPTO Trademark Examining Attorney will conduct a trademark search on your trademark, and that search is not limited to the USPTO TESS system. Since federal trademark registration is based upon use and not registration, a property trademark search will include all state business name registries, as well as domain names, product names and descriptions for online stores, google search results, and even dictionaries. Any conflicting or similar uses will be used to reject your trademark application, and it will be up to the person applying for the trademark registration to explain why the cited uses are not a bar to registration of the logo or name or word that is the subject of the trademark application.
2. Check the USPTO Trademark Electronic Search System (TESS)
Even though trademark registration is not required for a trademark owner to have trademark rights, it's still important to make sure your business name is not already registered in the USPTO. If someone has already registered the mark, why fight for it? It'll be expensive and generally a waste of resources. Just make sure you know how to conduct a proper USPTO TESS search. It's not intuitive to those unfamiliar with trademark law.
3. Search Similar Trademarks
The standard for infringement of a trademark is the likelihood of confusion. That means that merely changing the spelling or pronunciation of a word won't work to shield an applicant from potential trademark infringement. In other words, the USPTO's Examining Trademark Attorney will see and consider "momma" and "mamma" to be identical. "Goodnight" and "good night" are also identical, as are "black" and "blaque." So, any search you conduct should include similar sounding marks as well as marks that are written similarly.
4. Make Sure You Own the Copyright
If you purchased your trademark from a third party on a website like Fiver.com, Etsy.com, or 99Design, you might want to doublecheck to ensure that you own the mark. If that designer has sold the same mark to others in similar industries or that are selling related services or products, you will only be able to rightfully own the trademark if you were the first one to use it. Even then, the subsequent users will have some rights that reduce any rights that you may have should you be allowed to receive a trademark registration. (Don't buy pre-made trademarks or branding packages. It's easy, but you can never own them.)
5. Is Your Business Name a Trademark or a Service Mark?
A business name is considered a trade name and not a trademark, or service mark. Trademark law does not protect business names. Trademarks are words, logos, phrases and the like that indicate source to the public. Trademarks are generally associated with services and products, not business names. To qualify for federal trademark registration, the business name must be used to identify the business' goods are services from those of others, and not merely as the name of the company. Providing a proper trademark specimen will be key.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at firstname.lastname@example.org. More information can be found at https://ahajiamos.com.
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