Trademarking your business name - 11 key facts
Smart business people instinctively understand the benefit of finding a name for their business that has the potential to develop into a brand name. They know that a great business name is a vital element of a strong business brand; and that this brand is a valuable business asset.
Protecting that brand is just as important as protecting any other business asset, so after identifying a great business name, a business should consider registering its brand name as a trademark.
This trademark registration is often overlooked or ignored - perhaps because the whole area seems complicated and a little confusing.
What is a trademark?
A trademark is quite simply a unique symbol, word, name or phrase that is used to identify and distinguish the product or service of one company from that of another. Because people come to associate attributes and qualities with certain brands, trademarks help prevent confusion or manipulation. In the context of branding, everyone is familiar with the idea of a logo being a trademark - but symbols, sounds, words and phrases can also be registered, so a business's name can be a trademark, too.
The benefits of registration
Any company can try to prevent another business or individual from using its trademark. However, to prevent this 'passing off', you would need to prove that the trademark is yours, establish that you have built a reputation based on it, and show that your business has been harmed by the other party's use of it. Not easy.
This is where registration comes in. When you formally register a trademark, you can easily take legal action against any business or person that uses it without your permission. And you can also show people that your trademark is registered - and deter them from abusing it - by adding the ® symbol.
Formally registering this trademark allows a business to legally protect its trademark and its brand.
It's worth noting that the registering authority - like the US Patent and Trademark Office (USPTO) or the UK's Intellectual Property Office (IPO) - doesn't actually enforce the legal protection. It's entirely up to the trademark's owner to take legal action if they think their trademark has been misused.
The limits of registration
There are, as you might expect, some limits as to what business names can be registered as a trademark.
A registered trademark obviously can't use swear words, or be offensive or pornographic. And it can't be misleading. But perhaps less obviously, it can't simply describe the product or service; and it can't be common or non-distinctive in the relevant industry sector.
This means that a furniture company can't register the name 'Wooden' as a trademark, and a drinks company can't register the name 'refreshing'. A generic term like 'big search engine' can't be registered, but a unique name like 'Google' can.
What type of names can be registered as trademarks?
The whole idea behind registration of business names as trademarks is that they should help distinguish one business from any other. The more distinctive your name is, the easier it will be to register. So, although people might feel comfortable with names that use familiar or industry-specific words, they're not very likely to be approved for registration.
Descriptive names or names that are use generic words are best avoided. Names that are creative, unusual or entirely 'made-up' are a much better bet. As are names that are suggestive, rather than literal.
Registering your business name as a trademark
Applying to register your business name as a trademark is actually a fairly straightforward process.
When it comes to registering trademarks, it's first come, first served. So initially, you should run some quick online checks to make sure that an identical name - or a name that's very similar - hasn't already been registered by someone else.
As trademarks can only be registered for a specific state or country, and for specific categories of goods and services, you first need to decide where you need to be protected, and the scope of your business, ie. the categories of product or services in which it is going to be used. You can, though, register the same trademark in more than one category. The cost will vary depending on your country and on the number of categories you want to include.
It can become very expensive and complex if you want to protect your trademark internationally, although if you are based in the European Union, registration gained in one country can easily be extended to cover the whole EU, at an additional cost.
Once you have decided on your country and categories, you can then use free online resources for your specific area, or pay to use a trademark search specialist. (See the links at the end of this article.)
The application process is not guaranteed to be successful - your application will be rejected if the authority finds any names that are the same or similar to your name, in any particular industry category. So take the search for potential conflicts seriously - you could waste time as well as money.
If you're confident that there is no apparent conflict, you can complete your application online. This is a pretty straightforward form-filling exercise that shouldn't take more than an hour.
When they have received your application, your registering authority will then check to make sure no other trademarks similar to yours currently exist in your chosen categories, and give trademark holders an opportunity to object to your application. This can take a few months. They'll let you know if your application has been successful and you'll receive certification to confirm your registration has been granted.
Registered trademarks: 11 key facts
1. In order to register a name as a trademark, your business must either be up and running and using it, or have the clear intention of doing so in the future.
A trademark cannot be registered before a business is established, or just with the hope that it might, one day, be used by that business. Similarly, a trademark application can only be made under the name of the trademark owner; and transferring a trademark is a separate and time-consuming process.
This is why it isn't feasible for business that creates brand names, like Novanym, to register a name as a trademark 'in advance' - even if the name in question is completely unique.
2. Your business name might be protected under the laws of Intellectual Property (IP), even without registration.
Trademarks are a form of IP, similar to copyright, patents, and industrial design rights. These laws protect against the unauthorised use of a trademark which is considered to be similar to another, known as 'passing off'. Enforcement of these laws is not, however, easy or straightforward, so the formal registration of a trademark confers a higher degree of protection.
3. Registering a name as a trademark is not the same as registering a company name.
In order to do business, file accounts (and pay taxes!), you need to register your business 'trade name' with the authorities. In the US, this is done with the county clerk's office or with the relevant state government. In the UK, it's with Companies House.
This officially registers the fact that you are doing business under a trade name - ie. a name other than your own personal name. But it does not give you any trademark protection.
4. Registering a trademark only protects a name in a specific geographical location and for specific goods and services.
You can only register within one specific geographical location (ie. a state or country). But you can choose for your registration to cover more than one category of goods and/or service, as long as you are using the trademark in relation to each one, or intend to do so.
5. It doesn't necessarily matter if another company also uses your name.
Two companies can own the same name and both register that name as a trademark - as long as they are registered for different products or services.
That's why 'uniqueness' can be over-rated - a business name can be distinctive and unique in its context, even if it's familiar or similar to another name in another industry or context. Ask Apple.
6. You can't register literal descriptive words as trademarks - even if they are misspelled.
So it's perhaps obvious that names like 'Accurate Luxury Watches' can't be registered. But it's maybe surprising to discover that 'Akurate Luxxury Watchez' can't either.
7. Made-up names are easier to register.
One of the most straightforward ways of succeeding in a registration application is to make up a name from scratch. That way, they're not descriptive or literal - and they're unlikely to have been used by anyone else.
This explains the abundance of 'synthetic' names on supermarket shelves and on leading stock markets - leading brands and successful businesses who understand the value of their trademarks have developed names that they know can be easily protected.
8. A trademark lasts for 10 years, but its scope can't be changed.
If you are successful in your application, your registration will last for 10 years. It's good news that you don't have to renew or reapply every year - but it also means that if you think it's likely that your product range or service offering is likely to expand or change, you should consider including that class of goods or service in your initial application - or be prepared to fund a separate application in the future.
9. Anyone can use the TM symbol, but only registered trademarks can add the ® symbol.
Using the TM symbol is simply a way of showing that your business considers a name (or symbol) to be a trademark. So any business can use the TM symbol if it wishes to assert its claim to a trademark under general Intellectual Property law. There's no paperwork or application process to go through, and you don't need any permissions to use it. But it carries no legal protection either.
Because only trademarks that have been registered are allowed to use it, the ® symbol adds power and credibility - as well as protection - to a brand name.
10. Neither the USPTO in the States or the IPO in the UK actually enforce trademark protection.
The registering authorities simply manage and police the registration process and ensure that no conflicts exist. As the owner of a registered trademark, it's therefore still up to you to take any legal action you think is required to enforce the exclusivity of your trademark.
11. You don't need to include the .com of your domain name in your registration.
It is not acceptable to simply add a domain extension (.com or .co.uk, for example, or even .pizza) to a name that is otherwise identical to an existing registered trademark.
Therefore, if you apply for registration with your business name alone, it will give you the widest level of protection and will prevent someone from registering the same name by simply adding a different extension.
This a brief overview of the main issues to consider when trademarking a business name – or choosing a name that you can register as a trademark. For professional help and advice, we’d recommend that you contact a trademark specialist or lawyer.
Trademark registration specialists: Trademark Tribe
Trademark attorneys: Sipara
More in-depth reading and information
US trademarks: United States Patent and Trademark Office
USPTO: online application
UK trademarks: The UK Intellectual Property Office
European trademarks: Office for the Harmonisation in the Internal Market
Free search for international trademark availability: TM View
World Intellectual Property Office: WIPO
WIPO: Fee calculator
Trademarkia: Registering a trademark