You’ve spent hours upon hours developing your business idea and a plan for implementing it. You’ve decided on a name for your business and how you want your customers to recognize your product or service from your competitors.
Now, the question is, when should I trademark my business name?
The short answer is, the sooner the better.
What is a Trademark?
A trademark is a word, design, symbol, phrase, or a combination of the like that works as a source identifier. The mark is used to distinguish your product or service from other businesses that provide the same product or service as you. The mark is used to indicate to your customers that you are the individual or business that is providing that service or product to them, not someone else.
The reason for registering a trademark is to assist in providing your brand and business the utmost protection. The United States Patent and Trademark Office (USPTO) has two registries, the principal and the supplemental. If your mark is placed on the principal registry then it is afforded full trademark protection under federal law. Some of the benefits of having your mark placed on the principal registry are: (1) constructive notice throughout the entire country; (2) a legal presumption that you own the right to that particular mark; (3) the ability to file an infringement suit in federal court; (4) the exclusive right to use the mark in commerce; and (5) the ability to file with US Customs to prohibit infringing products foreign goods from being imported.
If your mark is placed or has been placed on the supplemental register then it still provides you with some benefit. If your mark is placed on the supplemental register then it allows you to contest other marks as businesses or individuals attempt to register them if it is confusingly similar to yours. Just because it is placed on the supplemental register doesn’t mean that it cannot be moved to the principal. Once your mark has gained what the USPTO calls a secondary meaning, which means that your mark has become distinctive to consumers. Once your mark has been on the supplemental register for five years you may consider applying to have it moved to the principal. The USPTO will consider the five years spent on the supplemental register when determining if your mark has become distinctive.
Should I Trademark My Business Name?
Now that you know what a trademark is, it’s up to you to decide whether your business name is what you want to be the source identifier to your customer. Do you want your name to be what people look for? Or, do you have a logo or symbol that is different from your name that you would prefer to use as the identifying factor your customer will look for?
This is an important question to ask yourself. Your business name is important, but is it how you want to identify your product or service to the customer. Your business name does not necessarily have to be what identifies your product or services. A single business may own multiple trademarks and use a different mark to identify different products or services. Your business name will be registered with the State Corporation Commission which will ensure that no other business in your state will be permitted to operate under the same exact name. However, that does not afford the same level of protection as obtaining a trademark for your business name would.
If you want your name to be what people look for when they want the product or service you provide, then registering your name as a trademark is the best option. If your business is providing a service, then your business name is likely to be what you want customers to look for when searching for that particular service. The primary reason for obtaining a trademark for your business name is so that someone else cannot capitalize on the good will that you develop with customers. Meaning, when your business takes off and customers enjoy your service or speak highly of your business to others, you don’t want someone else to realize that they can provide the same thing and name their business something so similar that the customer will believe that the new business is part of yours. If that happens, you lose business from potential customers and run the risk of the new business not performing to the customer’s satisfaction thereby sullying your name.
Why Trademark Sooner Rather Than Later?
Now that you’ve spent so much time developing your business idea and planning the best way to break into the market, you want to consider what your business name should be. Or, maybe you already have an idea of what it should be. Before you spend a small fortune of your money having your business name placed on your product or signage and vehicles, you should consider conducting a trademark search with the USPTO. The USPTO’s database of all trademarks is complicated and generic word searches typically do not turn up marks that may be important for you to see. An in-depth trademark search that compares your mark to other already registered marks should be completed to ensure that your business name or mark is not confusingly similar to a mark that is already registered.
An in-depth search is recommended so as to prevent you from potentially infringing on a mark that is already registered. There is great benefit to conducting a search. For instance, what if you spent thousands of dollars creating your brand and putting your business name on your product or advertising your service. You build up your reputation as being a great brand and supplying superior quality products or service. Your business starts to take off and gain notoriety. Then, one day while you’re in the office, you receive a notice that informs you that your mark is confusingly similar to another business’s and is infringing upon an already registered mark. If your mark truly is confusingly similar to another already registered mark, you may be required to pull all of your merchandise, signage, advertising, and anything else that displays your business name. Potentially costing you tens of thousands of dollars. After pulling everything that holds your business name, you then have to spend even more money rebranding your business. Along with the cost of putting your new mark or business name back on everything, you also now have to spend the time, effort, and money to re-inform your customers that you have changed your name.
The benefit to trademarking sooner rather than later is that you greatly increase your protection against something like that occurring. Once a search is completed and you are able to register your business name as your trademark, your business name will be protected from such a situation. After registering your business name as your mark, if another business were to start using a name that closely resembles yours and appears to be confusingly similar, you will have the ability to legally stop the infringement. If your mark is registered on the principal register it will be afforded the protections listed earlier. Of course, the USPTO will be the final decision maker as to whether the infringing mark is confusing to the customer. But, one of the best ways to protect your business name and your business is by obtaining a trademark.
How can Connors & Brenke Law Firm help?
Partners, Rachel Brenke and Andrew Connors have become intimately knowledgeable with intellectual property laws, including trademark registration and litigation. The firm has become highly-sought after for their expertise and knowledge in this very intense area of the law. If you are looking to protect your brand through registration, have been pinged with litigation or simply just want to see what your options are – contact us. While we are Virginia-based trademark lawyers, we have offices around Virginia and work in many states through partnerships with other attorneys.
Written by Derek Spencer, Legal Intern under the supervision of Virginia Trademark Lawyer, Rachel Brenke.