How do you trademark a name or a word?
If you want to obtain a US trademark registration for a business or product name, you should get familiar with important basics of the trademark application process. A practical understanding of the following core concepts will be valuable even as you work with an IP attorney:
- the identity of the trademark owner
- business name or product name – does it matter?
- goods and/or services to be sold under the name
- trademark search of marks confusable with your name
Identify the right company or person who owns the trademark
One common mistake we see in do-it-yourself filings is the misidentifying the trademark owner. The applicant identified in a trademark application is the owner of the mark. In most cases, this will be the entity or person who has been offering the goods or services, or will be doing so in the near future. Make sure that the proper entity is identified at the very beginning of the trademarking process. Except for minor clerical errors, identifying the wrong applicant may be fatal.
Should you trademark your business name or product name, or both?
Every company must have a business name, but not every business name will show up in selling a product. When it comes to trademark registration, a key factor is what the consumers will see. Keep in mind that the purpose of a trademark is to indicate the source of a product or service, so consumers must see your mark in order for it to serve its purpose. If you intend to keep your company name undisclosed in selling your products, then it might not make sense to file a trademark application for your business name.
In most cases, a word mark application would be appropriate for protecting a name. Applying for the word mark means that registration is sought for the wording without regard to any stylization or design elements.
What are the goods or services?
Will your trademark application be based on actual use or Intent-To-Use (ITU)? If ITU, then you can list as many goods and services as you genuinely to intend to sell under the mark. If actual use, then you must identify only those goods or services sold under the mark.
If your application is based on ITU, you must make sure that the mark is adequately used in connection with the goods or services before filing a Statement of Use. Otherwise, request an extension of time if you cannot meet the use deadline.
Consider a knockout search
Likelihood of confusion is one of the most common reasons for rejecting trademark applications. You can assess the risk of this rejection by having a knockout search done prior to filing. If any highly confusable marks are found, consider pivoting to a different mark.
File your trademark application
Once you’ve pinned down these preliminary considerations, you are ready to file a trademark application. Here is a helpful overview of the application process from initial filing to registration.
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