How to Trademark a Name or Word

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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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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