Trademark a Name in Seven Steps (Plus 5 Common Mistakes to Avoid)

Wondering why obtaining a trademark or copyright is essential? There are numerous compelling reasons that highlight the advantages of seeking protection for your intellectual property. Each reason showcases how safeguarding your brand or creative work can significantly benefit you. One of the most critical steps any business can take is securing a trademark for its name, as this legally protects the brand from infringement and misuse.

Trademarking a business name involves a series of important steps. By following these seven steps carefully, you can ensure that your brand is protected from unauthorized use and that your name is securely registered with the United States Patent and Trademark Office (USPTO). Additionally, we’ll cover five common mistakes to avoid that can jeopardize your chances of successfully registering your trademark.

Conduct a Comprehensive Trademark Search

Before filing a trademark application, it is essential to conduct a thorough search to ensure that your desired business name is not already in use or registered by another company. This search can be done through the USPTO’s Trademark Electronic Search System (TESS), where you can search for registered marks and pending applications that may conflict with your name. Failing to do so could result in the rejection of your application or, worse, legal disputes down the road.

Choose a Distinctive Name

The strength of your trademark depends largely on its distinctiveness. Generic or descriptive business names are difficult to trademark because they don’t provide enough uniqueness to qualify for legal protection. The more distinctive your business name is, the easier it will be to register and defend it. For example, coined or fanciful names (such as Google or Kodak) offer the strongest protection, while descriptive terms (such as "Best Products") may be rejected.

Determine the Appropriate Class of Goods or Services

When filing your trademark application, you must specify the class of goods or services your business provides. The USPTO uses the International Classification of Goods and Services (ICGS) system, which categorizes products and services into 45 classes. You may need to file in more than one class if your business offers multiple types of goods or services. Identifying the right class is important for ensuring that your trademark is accurately registered for the business activities you conduct.

Prepare and Submit Your Application

Once you have completed your trademark search and chosen a distinctive name, the next step is to prepare and submit your application to the USPTO. The application will require you to provide specific details, including your business name, the class of goods or services, and a description of how your mark will be used in commerce. You will also need to submit a clear image or rendering of the mark, along with the required filing fees. At this stage, any mistakes or omissions can delay the approval process, so it’s critical to ensure that all information is accurate.

File Based on Actual Use or Intent-to-Use

The USPTO allows businesses to file a trademark application based on actual use (if the business is already operational) or intent-to-use (if the business has not yet launched but plans to use the name in the future). For intent-to-use applications, you will need to submit a Statement of Use once the trademark is in use. Choosing the correct filing basis will impact the type of documentation you need to provide and the overall timeline of your application.

Respond to Office Actions from the USPTO

During the examination of your application, the USPTO may issue an office action if they find any issues or require additional information. Office actions can include refusals based on likelihood of confusion with another registered mark, descriptive names, or incomplete documentation. You must respond to these office actions promptly to avoid delays or abandonment of your application. Having an experienced legal team can help address these issues effectively.

Monitor and Maintain Your Trademark

Once your trademark is registered, your responsibility doesn’t end there. You must actively monitor the marketplace for any potential infringements and enforce your trademark rights when necessary. Additionally, you will need to file regular maintenance documents, such as the Declaration of Use and Trademark Renewal, to keep your trademark in good standing. Neglecting these requirements could lead to the loss of your trademark rights.

5 Common Mistakes to Avoid

1. Skipping the Trademark Search

One of the most common and costly mistakes businesses make is failing to conduct a comprehensive trademark search before filing. Without a search, you risk filing for a name that is already in use, which could result in legal disputes or a rejected application.

2. Choosing a Generic or Descriptive Name

Names that are too generic or descriptive are difficult to trademark because they don’t distinguish your business from others in the marketplace. Opt for a unique, creative name that will qualify for strong trademark protection.

3. Filing with Inaccurate Information

Providing incomplete or inaccurate information in your application can delay the process or result in a refusal. Double-check all details, including the class of goods or services, before submitting your application.

4. Ignoring USPTO Office Actions

If the USPTO issues an office action, it’s crucial to respond within the given timeframe. Ignoring or delaying your response can result in your application being abandoned, which would require you to start the process from the beginning.

5. Failing to Monitor and Maintain Your Trademark

Once your trademark is registered, it’s important to actively monitor for infringement and file regular maintenance documents to keep your trademark valid. Neglecting these tasks can lead to the cancellation of your trademark rights.

Trademarking your business name is a key step in protecting your brand and ensuring its long-term success. Ready to start the process? Contact Trademark Rise today for expert assistance with every step of the trademark registration process, from filing your application to maintaining your trademark for years to come.