How to Trademark a Name (Step-By-Step Guide)

  • by Brandon Boushy
  • 1 month ago
  • Blog
  • 0
A woman trademarking a business name

Protecting your brand assets is one of the most critical aspects of creating a business that has the potential to expand nationwide or globally. The company name, logo, slogans, and intellectual property rights can eventually be worth billions if you start a company that goes global. That’s why it’s important to know how to trademark a name.

I went through the trademarking process in the United States for my own eCommerce store in the process of writing this blog, and I have documented the steps so it is easy to go through the process. UpFlip is going to share the information you need to trademark a name.

We’ll introduce you to intellectual property and the services that the United States Patent and Trademark Office offers. Then, we’ll give you a walkthrough of the steps in the application and answer some of the most commonly asked questions about trademarks.

A Brief Introduction to Intellectual Property

There are three main types of intellectual property:

  1. Trademarks protect names and designs that identify the source of goods.
  2. Patents protect inventions. Anything that is a new creation for a product may qualify.
  3. Copyrights protect works of art.

The United States Patent and Trade Office (USPTO) uses an example of a vacuum cleaner to show the differences between the three types of intellectual property. We’ll use an example of the iRobot Roomba I3+ as an example.

If you want to conduct the search for practice, go to the Trademark Electronic Search System (TESS) and input iRobot Corporation as the Search Term and choose the search field as Owner Name and Address to limit the results to the iRobot Corporation.

Trademark Electronic Search System

The iRobot Corporation has 94 trademarks involving their name and slogans, most importantly iRobot and Roomba which are the company and product names.

The Patents are found by using the USPTO Patent Full Text and Image Database Search. There are 182 patents that the iRobot Corporation owns across their product lines including a vacuum brush and debris sensor. Note these are physical objects only.

The related copyrights can be found on publicrecords.copyright.gov and include copyrights for their end-user licensing agreement, quick start guide, and owners manual. These are the words and pictures only, but they could have also applied for copyright on commercials and other advertisements.

These protections can apply both in the United States and internationally. The protection defaults to the United States, but for an additional fee, you can apply for protection under the Madrid Protocol. Alternatively, you can apply for international trademarks on the World International Property Organization’s (WIPO) website.

Keep reading to learn about the services available at the USPTO.

Services Available at the United States Patent and Trademark Office

The USPTO serves five primary functions:

  • Apply for Trademarks using the Trademark Electronic Application System (TEAS)
  • Apply for Patents
  • Referrals to intellectual property lawyers
  • Education on intellectual property
  • Searching trademarks and patents for verification purposes

Now, we will focus on how to trademark a business name and a product name in the rest of this guide, but it is important to be aware of the services available at the USPTO. Let’s prepare to apply for a trademark.

Step 1. Get ready to apply

Before you apply for the trademark you’ll need to research whether the trade name is available, gather documentation, and create an account first. Let’s look at each of the following to understand what they include.

Search business names

Small business owners should do the research on their own to establish whether another business owner already has the same or similar name as a registered mark under trademark law. If you don’t check this before registering a trademark, you might be wasting a lot of time and money on applying for trademark rights you cannot get.

As discussed earlier you can search for trademarks of goods or services on TESS and filter by the class code if you know which classes you need to register a trademark. TESS will show you all the registered trademarks for the search results as well as the company or person who owns the registered trademark.

If there is an existing trademark owner, the information to approach them will be in the search and you can attempt to get legal ownership of the brand name by buying the trademark rights or paying a licensing fee to use the brand name. You’ll need legal advice from a law firm to successfully do so though.

Prepare documentation

You’ll need the following documentation:

  1. Business documents for the name of the organization that will own the trademark if applicable
  2. Personal information of the owner
  3. Personal information of the person applying (if different than owner)
  4. Products you are or will be selling
  5. Proof of the trademark in commercial use by the company
  6. International Class Number of each type of product or service you are registering a trademark to protect.

Create a USPTO account

You’ll need to create a USPTO account first. You’ll need to input your name, email, and phone number, then accept the terms of service and perform the Recaptcha. It will then send you an email that asks you to verify it and create a 12-character password that includes upper and lowercase letters, numbers, and special characters.

The USPTO Government website for trademark registration

Once you create the password, you’ll be able to set up 2-factor authentication (2FA) and add additional contact information. Set it up according to your preference, but be aware that the following steps will require the 2FA, and if you don’t set up a different one, it will use your email. You will enter a screen that looks like the picture below.

Website for filing trademark application

File a trademark application is in the top left column. You’ll want to go there. It will ask for you to provide the 2FA code. Now that you are in TEAS, it is time to start the trademark application process.

Step 2. Prepare and submit your trademark application

The next step in the process of how to trademark a name is to prepare and submit your business name for trademark protection. The first page gives some information on the following: 

  • Overall process
  • Contact information for the United States Patent and Trademark Office
  • A notification that 30 minutes of inactivity logs you out of the system
  • The questions listed below the screenshot:

The Trademark Electronic Application Systemic

  1. Please select one of the filing options below. 
    1. TEAS Plus – I am filing a TEAS Plus application, with a reduced fee of $250 per class of goods or services. You should only choose this option if you are 100% confident that you will fill out the trademark protection application completely correctly. They will increase your filing fees if there is one error.
    2. TEAS Standard – I am filing a TEAS Standard application, with a fee of $350 per class of goods or services. They help you if you make an error in the application process. I recommend just accepting that you are probably going to use this fee for trademark registration unless you have a narrow range of products or services you sell.
  2. Is an attorney filing this application?
    1. Yes
    2. No. I expect most readers will be included in this answer when getting a trademark for their business name. You should review the Trademark Basics page if you have not already.
  3. [OPTIONAL] To upload a previously saved form file, first review the USPTO’s TEAS Help instructions for accessing previously saved data and then use the “Browse…” button below to access the form file saved on your computer.

The next page (pictured below) will ask for information regarding the owner of the mark. It will require the following information:

  • Owner’s name – If using a person’s name use the format: “Last Name, First Name, Middle Name “
  • Business name – Whether the business is a DBA (doing business as), AKA (also known as), TA (trading as), or Formerly. This is optional, but if you have a DBA put it here. If you are involved in investment trading, you may use TA, and Formerly is for name changes that occur like Facebook changing to Meta.
  • Entity Type TEAS – Asks different questions based on the entity type chosen and whether you are a foreign or domestic company
  • Mailing address – Internal Address is Suite or Apartment Number
  • Domicile Address – Physical address of the business. You can choose to use the same as the mailing address.
  • Phone number
  • Fax
  • Email
  • Website

The "Owner of Mark" information section

Input all this information, and then go to the next step of trademarking a business name, which is submitting the trademark. The page below allows three options for filing:

  1. Standard Characters – No style or design elements allowed. You’ll have to reapply when you have a design if you use this option.

An UPSTO generated mark image

  1. Special Form – If you want the design included it will ask you to upload a jpeg and to describe it both based on looks, text, and color. It will also allow you to add a variety of additional statements if any apply. Consult with a lawyer to see if you need any of the additional statements when you trademark a business name.
  1. My description was: 
    1. A cartoon man with a brown goatee, eye patch, and exploding head is at the top center. 
    2. “Brandon’s Insanitorium” is directly below the cartoon man. 
    3. “Crazy Designs for a Crazy World” is centered directly below the words “Brandon’s Insanitorium”.

A special form to describe a business' description

    3. Sound Mark – If your business name or slogan is being said verbally, you may want to trademark a sound mark.

After you have input the description, you’ll need to choose the types of products that will be protected by the trademark. For every class of goods, you’ll need to provide the International Class Number, the assigned filing basis, and provide evidence, description of the evidence, website link (if applicable), and date of commercial use. The photo below is some for my business name trademark application.

Checklist for trademarking a business

The filing basis can be broken into four basic options:

  1. Use in commerce basis (under Trademark Act Section 1(a)) – Logo and business name are currently in use
  2. Intent-to-use basis (under Section 1(b)) – Logo and business name are intended for commercial use in the near future.
  3. Foreign registration basis (under Section 44(e)) – Your logo and business name are already owned under a foreign registration in a different country and you want them to apply to the US
  4. Foreign application basis (under Section 44(d)) – Your logo and business name are already owned under a foreign registration that occurred in the last six months in a different country and you want them to apply to the US. It expedites the process.

The next page will let you create a custom 12-character reference number and add a backup email.

The Trademark section for creating a character reference number

The final page requests verification of the amount, in my case $1,400. You’ll also need to confirm that the information is true to the best of your knowledge and either:

  • Sign electronically
  • Print and sign (Personally, I use Adobe Fill & Sign to sign documents from my phone.)
  • Email to a second party for signature
  • Send without signature 

Then you’ll go to a page encouraging you to review the documents for errors, save the document, then proceed to the payment page.

The fee information section in the UPSTO website

After you have paid the processing fee, trademarking a name proceeds to the review process which we’ll look at now.

Step 3. Work with the assigned USPTO examining attorney

There is still more to do before you have exclusive rights to provide goods and services under the trademark name. You might wait months for the trademark to get an initial review and years for the entire process to trademark a company name. This step of the registration process will require a USPTO trademark attorney to review whether:

  • There is an identical or similar mark that your trademark would be infringing
  • You filled out the application correctly
  • The documentation you provided about the goods or services proves that you qualify for the trademark for each product or service
  • The trademark application status should be approved, rejected, or awaiting proof of trademark use (only if filing intent to use)

Upon the first review, the USPTO will send you a letter if there are any issues. They call this an office action and you will have up to six months to respond, so the more attentive you are, the quicker you’ll get the trademark name.

After you respond to the office action, they will review it again and either reject or accept the application. Once this occurs, the path will vary depending on the result. Let’s look at both of these to see the next step on how to get a trademark.

Step 4. Receive tentative approval or denial of your application

The next step to trademark your business name is to get approval or denial. What happens from there depends on the results. Let’s look at each scenario.

How to trademark your business name after approval

Assuming you performed the search well and were cooperative with the lawyer, a trademark or company name will be published in a weekly publication called the Official Gazette. If no one contests it for 30-90 days after the publication date, you successfully receive the registered trademark.

If another business claims they own the rights to the business mark or contests the registration of the desired name, there will be a trial at theTrademark Trial and Appeal Board(TTAB). The appeal board will operate using the same laws as the federal court. These will normally be because another brand identity thinks the mark will cause them harm due to being too similar to their own mark.

It is a rarity to face opposition as only 2.8% of registration applications go through opposition proceedings, and 55.2%  of the ones that do still become a registered mark after the proceeding. You don’t need to worry about it too much when wondering how to get a name trademarked.

Watch the USPTO video below to learn more about the court proceedings at the TTAB.

Let’s look at what to do if you get rejected on the path to get your limited liability company a business mark.

Your business mark application got rejected. Now what?

If after going through the application process, the lawyer rejects your trademark registration, you’ll have a chance to correct it and get it approved. If they reject you twice, you have the right to appeal to get your business mark approved.

This goes through the same appeal board, but these have much lower chances of success than opposition to a business mark because they are often over issues like common words or another business already owns the business mark.

Hopefully, the steps of how to trademark your company go more smoothly than a rejection. If you have to appeal a rejection, you may spend years in court fighting for approval. Now that you know the results of an unlikely rejection, let’s look at how to trademark your company name and keep it registered.

Step 5. Maintain your registration

Once your trademark has been approved, you will need to submit documentation to maintain the trademark business name. At different points, you’ll need to submit the following forms. The following links require a USPTO account and fees may be subject to annual changes:

  • Declaration of Use and/or Excusable Nonuse of a Mark under Section 8 – After the first five years but before the 6th year of commercial use, between the 9th and 10th year, and every 10 years after the Declaration of Use must be filed. At the time of writing, there is a $225/class fee and a $100/class six-month extension option.
  • Declaration of Incontestability of a Mark under Section 15 – This document should be filed after the first five years and makes it where other companies cannot challenge your claim to the trademark business name. At the time of writing, it is a one-time filing of $225/class and can be combined with the Declaration of Use and/or Excusable Nonuse of a Mark form during the 5th year.
  • Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9 – This document needs to be filled out between the 9th and 10th year and every 10 years after or you will lose your trademark. The fee is $525/class at the time of writing, but the USPTO reserves the right to change fees.

Learn more about how to trademark a company name and keep it valid on the USPTO keeping your registration alive page.

FAQs About Trademark Registration

How much does it cost to trademark a name?

It costs $250-$350 per class to get a mark. Additional fees apply if you ask for an extension request, require legal action, or want border protection against a geographic area outside of the U.S.

How do I trademark a name?

You go through the following process to trademark a name:

  1. Go to UPSTO.gov
  2. Conduct trademark search
  3. Create USPTO account
  4. Apply for the trademark 
  5. Wait for Office Action letter 
  6. Respond to any requests
  7. Tentative Approval/Denial
    1. Tentative approval is posted in Official Gazette to give people to contest
    2. Denials can appeal
  8. Final Decision

Is it free to trademark a name?

No, but if you have been using a name for years and someone later registers the same name, you may be able to win an opposition case using common law rights. Don’t assume the courts will protect you if someone files a similar mark before you. Apply to register your trademark as soon as possible.

How to trademark a product name?

It’s the same way as a company name, but you need to have the specific product in the proof. 

  1. Go to UPSTO.gov
  2. Conduct trademark search
  3. Create USPTO account
  4. Apply for the trademark 
  5. Wait for Office Action letter 
  6. Respond to any requests
  7. Tentative Approval/Denial
    1. Tentative approval is posted in Official Gazette to give people to contest
    2. Denials can appeal
  8. Final Decision

Do I need to trademark my business name?

You should, but many of our business owners say that it’s not worth it when money is tight because you can’t really afford to fight the legal battles that come with bad actors stealing your ideas. They suggest focusing on providing better service than the competitors, then get it when you’re making a nice living.

Check out this interview with Paul from Fast Cap.

What’s the cheapest way to trademark a name?

Trademarking a company name is always going to be expensive, but the least expensive way to get a trademark is to get a print-on-demand company like Printful, use their logo generator, throw it on a t-shirt, and sell it in an e-commerce shop like Shopify.

Then do the trademark yourself for $250 under the “already-in-commercial-use option” in the USPTO application. Wait for it to go through the whole process. Start selling other items then apply for other classes as you go. And that’s how you trademark for less.

Conclusion

That finalizes our walkthrough about trademarking. We’ve introduced you to trademarks and other intellectual property, provided the resources to learn more about it, and walked you through the application process. 

If you have any questions, check out our FAQs below or leave them in the comments. What aspect of trademarking and intellectual property would you like to know more about?

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