The Trademark Name Game and 4 Steps to Master It


You’re about to launch a new company, and you’ve come up with a great name.

But, before you open up your doors, you may want to take a step back and determine whether a trademark is best for your business. If so, you’ll need to figure out how to secure that trademark – that little superscript “R” with a circle around it. Here are some things to consider when researching best trademark branding practices for your new business.

What’s In a Name? You might think the answer is “everything” and that may be true. Nonetheless, you’ll want to first determine whether you need a trademark for your company name.

According to Joel Lehrer, an intellectual property attorney in the Boston office of Goodwin Procter LLP, you should consider a trademark if your company’s name has intrinsic value and will be the primary way consumers recognize your brand.

“You want to make sure you have trademark rights in the brand to prohibit others from using it,” says Lehrer.

If you plan on selling products or services nationally, a federal trademark is important as it protects you from another company knocking off your brand. It also acts as a consumer protection mechanism, so your customers know they are buying the real deal. For example, a pair of athletic shoes with a Nike swoosh elicits the Nike brand, whereas another company’s shoes with similar swooshes can be confusing to the consumer and would infringe on Nike’s trademark, says Lehrer.

On the flipside, you likely don’t need to file for a trademark if your business will remain local. For example, if you run a neighborhood restaurant or shop, you don’t need a federal trademark because your name may already be protected by certain “common-law” rights. This means that if you operate in a certain geographic region, you may have rights to stop others from running a similar business with the same name in your area.

Learn Whether You Can Even Get a Trademark. You love your company name, and it may be the best name for your business. But, if your name is considered “descriptive or generic” you will likely be denied a trademark. For example, take a personal training company called Fitness For You. Because this name could describe any fitness business, it probably isn’t eligible for a trademark, whereas an application for a similar business called Get Into the Groove might be allowed.

“For a trademark to be allowed it should be either “fanciful, arbitrary or suggestive,” says Lehrer.

Find Out If the Trademark Is Already Taken. If you’ve chosen a name that you feel you can trademark, it’s essential to do your research and find out if someone else is already using your chosen name in your industry.

“If you open up a hamburger joint, you probably shouldn’t name it McDonald’s or anything that comes close,” says Lehrer.

The best way to start your research is through an online search. Just type in your company name and see what comes up. Chances are you will see your name associated with other businesses, yet those other companies may either not be trademarked or be operating in different industries – leaving the door open for you. Delta Airlines and Delta Faucets, for example, both have trademarks for the same name but in vastly different industries. There is little chance consumers will confuse the two when either shopping for airlines tickets or plumbing supplies.

If it appears that your name is available, take it to the next level and do a search via the U.S. Trademark Database. If no one else has taken that brand name, you have a good shot at getting your trademark approved. It’s time to move forward.

File for Your Mark. These days you have many options for filing for your trademark. You can do it yourself on the Patent and Trademark Office website, file your application through an online legal service, or hire a lawyer. The U.S. government fee ranges from $275 to $325, so that will be the base price regardless of the route you choose. Once you file your application, an attorney from the U.S. Patent Office will examine your mark and may call you with questions. You should be prepared to wait at least six months before you find out if your application has been approved. If you don’t have legal expertise, you might want to forgo the DIY or online service options. Hiring a lawyer may be more costly but you’ll likely encounter fewer problems.

“The process can be complicated, and you typically have a better shot of getting your trademark allowed if you go with an experienced attorney,” says Lehrer.

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Tags: Running a Business