A “trademark" is one of three legal terms used to describe “intellectual property”. The others are "patent" and "copyright". A trademark can be a word, phrase, symbol, design, combination of letters or numbers, or other device that identifies and distinguishes products and services in the marketplace.
Trademark registration with the U.S. Patent and Trademark Office (USPTO) provides legal protection for your brand. Trademark registration can include your brand name, slogan, logo, or dominant goods and services.
In this article, we explain the differences between a trademark, business name, and “doing business as” (DBA) name, as well as tips on how to register a trademark.
Benefits of trademark protection
Whereas patents and copyrights are basically used to protect the commercial rights of inventors and creators of artistic or literary works, respectively, the basic concept behind a trademark or service mark is to prevent unfair competition.
Trademark law protects you, the owner, from competitors stealing your identity or using a name or symbol so similar that it could cause confusion for your clients or customers. By identifying a product or service’s source, a trademark or service mark also serves to protect consumers from deception.
Trademark vs. business name
Your business name is the legal name that you filed for your business in the state where you established your LLC, corporation, or other business structure.
Once your business structure is approved, your business name is protected but only in that state. This state prohibits other businesses from using the same name for an LLC or corporation. However, that protection does not prevent a business that operates as a sole proprietorship or partnership from using your business name in the state. It only prevents them from forming an LLC or corporation with that name.
It's important to note that registering your business name in the state does not restrict another business from using the same name in other states. For example, if you incorporated your business in Virginia, another business could use your name or incorporate under that name in Maryland or Pennsylvania.
Similarly, your trade name or DBA name is distinct from a trademark. A trade name is your business’s official name. Registering a trade name or DBA name does not provide the same legal protection as a trademark.
To obtain a trademark, you must file a separate registration with the USPTO – a federal agency. Registering a trademark:
- Establishes that no other business is using the trademark.
- Ensures exclusive use of the trademark by your business.
- Prohibits another business from infringing on your registered trademark.
- Protects you from claims of infringing on previously registered trademarks.
Understanding trademark symbols
A trademark is denoted by the trademark symbol “™” or by the federal registration symbol “®” if an actual registration filing has been approved by the USPTO.
A service mark, denoted by the symbol “℠”, offers virtually the same protection as a trademark but is used instead to identify and distinguish services rather than products.
When the term “trademark” or “mark” is used, it is understood to include a service mark as well. Trademarks are usually synonymous with the brand name or design that is applied to a business or its products or that is used in connection with services.
Tips on registering a trademark
The Lanham Act (also known as the trademark act of 1946) established the current federal trademark law and the procedures we follow today for registration of trademarks with the USPTO in Washington, D.C. A trademark must meet certain qualifications to be accepted on the USPTO Principal Register and reap its many benefits.
You can register your business for a trademark directly with the USPTO or use the services of an intellectual property or trademark registration lawyer.
Even though most states comply with the guidelines of the Lanham Act, you may also want to register a trademark in the state where your business is legally registered.
Keep the following points in mind as you decide whether to register a trademark.
No trademarking of common or generic terms
For obvious reasons, the USPTO does not allow trademarking of common or generic terms that are used by many or everyone to describe a type of company, product, or service. Furthermore, the USPTO states that registered trademarks may not:
- Be “immoral, deceptive or scandalous matter"
- "Disparage or falsely suggest a connection with persons, institutions, beliefs or national symbols"
- Be “merely descriptive," "deceptively misdescriptive." "primarily geographically misdescriptive," "primarily merely a surname," or "functional"
Use distinctive names
Business name trademarks can only be registered if they are distinctive and unlikely to be confused with existing trademarks.
The more distinctive your business, product, or service name, the more likely it will be available for you to trademark.
For example, the highest level of protection is given to created words (like “Xerox” or “Verizon”), random (existing words that don’t sell what they tell, such as "Canon" or “Caterpillar”), and suggestive terms (products or services with brand names that hint at their quality or merit, for example, "Princess Cruises" or “Lexus”).
The registration of a more descriptive name is only possible under certain circumstances, such as if your trademark has been used extensively in commerce for a long period of time. Some examples of a descriptive trademark, according to the USPTO, include:
- “Creamy” for yogurt
- “Apple pie” for potpourri
- “Bed & breakfast registry” for lodging reservations services
A descriptive trademark differs from a suggestive trademark in that it immediately gives an idea of what your goods and services are, whereas suggestive trademarks refer to the product or service. For example, the term "moisture-rich" for skin moisturizer is descriptive of a cream or lotion that helps lubricate and hydrate the skin – this would not qualify as a trademark. However, the brand name “Weleda Skin Food” is a suggestive, registered trademark for skin moisturizing products.
Conduct a trademark search
There are two types of searches you can conduct, giving you varying types and depths of information.
- Online trademark search. You can conduct an online search with a screening tool. They often show terms and logos that are already trademarked by others. This search may be limited to federal databases and may not always capture all instances of a trademarked term.
- Comprehensive trademark search. A comprehensive trademark search is the only way to see if there are variations of your desired name or logo that have been registered, if your desired name or logo is in use in a state, if it is in use as a common law trademark, or if a trademark registration filing has been abandoned.
It is best to have the report created by a company that specializes in comprehensive trademark search reports and then reviewed by an attorney for a legal opinion on whether you can proceed with your desired name without infringing on anyone else’s mark, and also whether your desired name is a good candidate for trademark registration.
Summary
As you can see, trademarking your brand or business name goes beyond thinking of a name and registering it with the right authorities. It’s important to conduct brand research, do your due diligence, and choose a name that’s truly unique.
Learn more about how we can help you research, register, and maintain your trademark or trade name.
Related articles: