Protect Your Brand: Why Trademarking Your Business Name Matters
Updated: Mar 18, 2022
A unique name and brand are the cornerstone for any successful business. That’s why it’s so important to protect that identity from others who might try to gain a competitive edge through infringement.
A registered trademark provides a formidable wall of defense, not just for your business name, but for logos and other imagery that establish you firmly in the eyes of your customers.
While a trademark isn’t required for your business name, let’s take a look at why it makes so much sense from a legal and practical perspective.
What is a trademark?
A registered U.S. trademark is intended to protect not only your business name, but also a word, phrase, slogan, design, symbol, or any combination that establishes your identity.
It gives you the exclusive right to use your business name nationwide in connection with your goods and services. It protects you from trademark infringement, whether it’s inadvertent or intentional, and allows you to legally enforce your rights.
At the federal level, trademark applications are reviewed and granted by the United States Patent and Trademark Office (USPTO). In Florida, it is possible to register a trademark at either the state level or the federal level.
However, it’s strongly advised to apply for your trademark through the USPTO. That makes it enforceable not only in Florida, but nationwide. This also gives you possible legal recourse at the federal level in case of infringement and any potential damages. This video explains it in better detail.
Limited protection vs. full protection
Even without a registered trademark, your business name enjoys a limited amount of protection from infringement under common law. You can place a TM after your business name to signify that you’re claiming the right to use your brand, even if you haven’t applied for a registered trademark.
However, common law rights can be difficult to enforce in court, and are typically protected only in the geographic region where your business is located. A registered trademark allows you to use the ® symbol and enjoy full protection under the law.
Enforcing your business name trademark
When your business name is registered as a trademark, it becomes part of the USPTO’s publicly searchable database. The Trademark Electronic Search System (TESS) is an excellent resource, and should be monitored constantly as part of an effective strategy for protecting your trademark.
If a company seeks to register a business name or other trademarks, a search of the database will quickly show them if it is potentially infringing on your registered trademark. Likewise, if you’re seeking to trademark your name, you’ll ensure that it’s not in conflict with any existing trademarks.
However, it’s important to know that the USPTO is not responsible for enforcement. Any request for remedy – up to and including legal action – needs to be initiated by you, or through legal counsel with experience in protecting intellectual property.
More than words
Your business name is important, and it typically ties closely to your company logo. Consider also applying for a registered trademark for your logo, since it can be equally as important as the name when it comes to your corporate image.
Looking for proof? Think about:
McDonald’s Golden Arches.
The Nike Swoosh.
The Starbucks Mermaid
Those are just a handful of the logos that are instantly recognizable by consumers, even without the company name. And, of course, both the name and logo trademarks are all zealously enforced by the companies that own them.
Trademarking outside your industry
It’s important to note that trademark protection typically does not extend outside your industry. In most cases, it can be used by companies whose goods or services are not in direct competition with your business.
For example, the business name trademark for Apple Inc. would not be infringed by a regional chain of “Shiny Apple Dry Cleaners,” since they attract different types of customers. However, a trademark application for Golden Apple Technologies would likely be rejected by the USPTO. The key is whether a company’s name or image could be confused with another in a similar industry.
Nevertheless, if your business name is not trademarked, it lacks the highest level of protection, making it potentially susceptible to infringement inside or outside your industry. One solution could be registering your business name for more than one industry, or “class.”
For example, if your business sells both athletic apparel and sports equipment, you’ll get the best protection by trademarking your business name in each class.
Trademarking around the world
South Florida is a world-famous trade center, with easy access to many international markets. If your business has worldwide ambitions, it’s advisable to consider trademarking your name in countries where you might be doing business in the future – especially in an increasingly digital economy.
Once you have a registered U.S. trademark, you can take advantage of the Madrid Protocol for international registration. It allows you or your legal representative to file a single application that covers more than 120 countries – over 80 percent of the world’s trade.
Other things to consider
Since the USPTO is a government agency, it is open to the public for trademark applications. However, it’s a lengthy process; just the initial assessment by a USPTO examining attorney can take up to six months after filing, usually followed by several more months of additional steps.
The USPTO will require government-mandated filing fees, typically depending on whether your business name needs to be registered in multiple classes.
The trademarking process is detail-oriented, with a number of associated fees and deadlines, plus potential stumbling blocks. Many companies choose an intellectual property attorney who understands the nuances and requirements, rather than trying to handle it internally.
Looking at the long term
Successful business owners understand the power and value of a brand from Day 1. But creating that identity is only the beginning: Long-term protection through an effective copyright strategy is a necessity as your business gains momentum and becomes successful.
Josh Gerben is the founder of Gerben Intellectual Property, a full-service intellectual property firm, with physical locations in Washington, DC, Philadelphia, and Miami. Josh and his team offer patent, copyright, and trademark services. Since 2008, Gerben IP has secured over 6,000 trademark registrations for clients and has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, CNN and more.