I created an online store recently, and I put a lot of thought into its name. I plan to have this online store for quite some time, as well as plan to continually expand it. For this reason, I wanted to register trademark the name that I came up with.
I was lucky in that I obtained professional assistance in registering my trademark. With that help, along with months of waiting, my store’s name is now registered trademarked with the United States Patent and Trademark Office (USPTO).
If you’re wondering if you even need to trademark your business name, or how to go about getting your name register trademarked, this article should help lead you in the right direction.
Should You Register Trademark Your Business Name
A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another, as well as to indicate the source of the goods. Because your business name is vital to your business, as it’s how others will identify your business, you want to protect that name.
If you have a local business that serves a certain area, then you most likely do not need your business name registered trademarked. For example, if you’re doing business in your hometown under the name Dave’s Auto Repair, then your business name would be protected under common law trademark rights. If another auto repair business moves into your town and tries to name their business Dave’s Auto Repair, you can stop them from doing so as long as you can prove that you were using the name first. Many times, simply by registering your business with your local government agency can prove this for you.
Common-law trademark rights will only protect you in your immediate geographic area though. Therefore, if you have plans to expand your business throughout your state, or go even further and expand nationally, then you should consider getting your business name registered trademarked through the USPTO. This will ensure that another company cannot legally use the same business name as your own, and it will protect the integrity of your business. If this is your goal, continue reading to find out how to trademark your business name.
Start With Research
Since I sell online, and I sell to all 50 states, I wanted to secure the name of my store and make sure that it could not be used by anyone else. At this point I started to check into how I could register trademark the name that I came up with.
The first place that I went to was the United States Patent and Trademark Office (USPTO). If you want a registered trademark, this is the place to go. They not only oversee the process of obtaining a registered trademark, their site contains useful information to assist you as well.
The first thing that you need to do, is to make sure that no one else is using the name that you have chosen, and to verify that name has not already been registered by someone else. To do this, go to the Trademark Electronic Search System (TESS), select a search option, and enter the name of your business. 
If your chosen name comes up, it will give you the information on that name, including the name of the owner, when that name was registered, and whether or not the name is currently being used. If your chosen name does come up, then you obviously won’t be able to register it. If the name is registered trademarked to a business that is similar to yours, you’ll have to come up with a new name altogether, as you won’t want to infringe upon someone else’s trademark.
If your chosen name doesn’t come up, that’s a good sign, although it is not a guarantee that your name will be able to be registered. When researching my name, I not only went to the TESS website, but I also did a basic Google search just to see if I could find the name anywhere online.
You will also want to make sure that you have a strong trademark that is distinctive. The stronger your trademark is, the more easily you can prevent others from using it without your permission.
A strong trademark is one that is suggestive, fanciful, or arbitrary.
- A suggestive trademark would be one that suggests some quality of the goods or services offered. Jaguar® cars is an example of a suggestive trademark as the name suggests that their cars are very fast.
- An arbitrary trademark is an actual word, but it has no association with the good or service offered. Apple® computers is an example of an arbitrary trademark.
- A fanciful trademark is an invented word for the sole purpose of functioning as a trademark. Nike® is an example of a fanciful trademark. A fanciful trademark is the type of trademark that I applied for.
File Your Application
If you’ve done your research and feel that your business name qualifies to be registered trademarked, then your next step is to file an application with the USPTO. To file online, you will need to verify your identity through a two-step process. As of August 6, 2022, identity verification became mandatory to be able to file through the Trademark Electronic Application System (TEAS).
The trademark application has 10 components:
- The name and address of the applicant
- The citizenship and legal entity of the applicant
- A name and address for future correspondence (this does not have to be the same as the name of the applicant)
- A drawing of the desired mark (if you are only applying for the name and don’t want to include a design element, you simply type in the name)
- A thorough description of the mark
- A specific list of services or goods covered by the trademark application
- The class of services or goods
- An example of the mark in use as well as the date it was first used (a screenshot of my website showed my mark in use)
- A dated signature from you or an authorized representative
- The appropriate fee for the type and number of classes included on the application
There is an exception to component #8 where you need to show the mark being used in commerce. There is an option where you can apply for an intent-to-use (ITU) trademark. If you choose to apply for an ITU trademark, you will still need to pay the required fees, and then when you do use the mark in commerce, you will have to demonstrate your use of the mark in commerce at that time, complete the documentation, and pay the additional fee to file again as in-use commerce.
After everything is properly filled out, your application is filed and your fees paid, you will receive a confirmation receipt from the USPTO along with a serial number that you can use to check the status of your application.
Time To Let The USPTO Work
Once you’ve filed your application and paid the fee, the work falls into the hands of the USPTO. Registering your trademark is a complex process that involves your application moving through various stages. The process to register your trademark can take anywhere from a few months, to over a year. The time for the USPTO to process your trademark can depend on various factors, such as how many applications they have received, or whether any issues are discovered in the original filing.
During my filing, the USPTO did request that I alter my description of goods for one category, which I responded to immediately. It was a simple fix, and my quick response kept the process moving.
Even if you’ve done extensive research, the USPTO will conduct their own research after you file your application, and they may refuse to register your trademark. Similarity in sound, appearance, or meaning of another trademark is just one of the reason the USPTO may deny your trademark. If this does happen, you will want to make sure that you are not infringing on another’s registered trademark.
If the USPTO decides that your trademark meets all requirements to be able to register, the next step is for them to publish your trademark for opposition. When a trademark is published, it provides an opportunity for anyone to oppose your mark within a 30-day period. People can oppose a trademark if they are currently using the mark themselves or believe they will be damaged by the registration of the trademark. However, if no one files an opposition or an extension to file an opposition within that time period, then the trademark will be registered a few weeks later.
The USPTO will then send you an official notice of registration along with your United States trademark registration number. For me, this was a great feeling knowing that the months of waiting and wondering are over, and the time and effort spent was definitely worth it.
Protect Your Trademark
The first thing that I did to protect my trademark was to use the registered trademark symbol ® with my business name. To continually protect a trademark though, and to keep it valid, you must also regularly demonstrate use throughout the life of your trademark, as well as file the correct documents with the USPTO in a timely fashion.
To maintain your registration and keep its benefits, you must file these documents within these deadlines:
- File a Declaration of Use and/or Excusable Nonuse under section 8 between the fifth and sixth years after the registration date.
- File the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9 between the ninth and 10th years after the registration date.
- File subsequent Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9 every 10 years after that (between the 19th and 20th year, etc.).
There is a six-month grace period after each of the above deadlines where you can file, but you will be charged an additional fee. If you don’t file before the end of the grace period, your registration will be canceled or deemed expired. If this happens, you will need to apply again for your trademark, with no guarantee that the USPTO will approve it.
Protection of your trademark also requires you to monitor your trademark. Although the USPTO registers trademarks, they do not enforce them; that is up to you. You can protect your trademark by monitoring USPTO filings and opposing any applications to register trademarks that seem similar to yours. You can also conduct internet searches of your trademarked name to make sure no one is using your name without filing.
If you do notice another company is using a name that’s similar to your trademarked name, you can send a “cease and desist” letter to them which will most likely stop the infringer from using the name. If that doesn’t work, your federal trademark registration gives you the right to file a lawsuit in federal court.
There are some large companies that work hard to maintain their trademarked identity, who hire people exclusively to search for any infringements on their name. I do know that Harley-Davidson® is one such company. They take pride in their brand and they work hard to protect it.
Expand Your Trademark
Your trademark protection through the USPTO covers you throughout the United States. If you wish to expand your trademark protection farther than the United States, then you must use the Madrid Protocol to protect your trademark in foreign countries. To do this, you must already have a basic registration filed with the USPTO. This basic application serves as a basis for filing an international application and obtaining an international registration. The international registration then serves as a basis for requesting trademark protection in one or more Protocol member countries.
The issuance of an international registration does not automatically protect your trademark in other countries. Trademark protection is subjected to the national trademark laws in each designated country that is applied to and each separate country may either grant or deny registration.
I filed a Madrid Protocol for my trademark, and I applied for my trademark to be registered in Canada, as that is the only other country that I currently sell to. Filing for a Madrid Protocol can get expensive as there is a fee to file the initial Madrid application, and there is also a separate fee for each country that you apply to.
Use Professional Help If Needed
I mentioned at the beginning of this article that I obtained professional assistance in applying for my registered trademark. An attorney is not needed to register your trademark in the United 
States, but a U.S.-licensed attorney who specializes in trademark law can be a great assistance in guiding you through the process if you can afford it.
My business is small, and I didn’t have the money to spend on an attorney. Through my research though, I found that the USPTO has a Law School Clinic Certification Program that allows certain law students to practice intellectual property law before the USPTO under the strict guidance of a law school faculty clinic supervisor. This program has several law school clinics that you can apply to for assistance, based on practice area, as well as geographic area. I had applied to several with no answer back before I finally heard from one school. I worked with a law student who was about to graduate, and she was overseen by a practicing attorney to make sure everything was done properly. This was such a great help to me, and I am very grateful for their service.
A couple of other places that the USPTO website recommends to visit for free or reduced legal services are Pro Bono IPL Resources in the United States and the INTA trademark pro bono clearinghouse pilot program.
Conclusion
Registering your trademarking is a multi-step process that takes time and patience, but to have the rights to that name as well as secure your businesses identity makes it worth the time and effort. Free help is available if you remain persistent in your search for it.
This article is a summary of what needs to be done, and special circumstances may require additional steps. The USPTO website is a great place to go for specific information pertaining to any unique situations.
If you have any questions, or any additional advice if you’ve had personal experience with this before, please leave your comments below.
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