That which we call a rose, by any other name would smell as sweet. Well, almost as sweet as the satisfaction of obtaining protection for your business’ name. And hopefully not as ill-fated a journey as that of the two star cross’d lovers.
But enough of drumming up bad memories of 10th grade English class. You’re here to learn the various ways of protecting the name of your business, service, or product (we’re going to lump all of these together and just call them either your “business name” or “mark” to make things easier).
Your business’ name will be one of its most important assets, and you will likely end up investing a significant amount of time and money into building up its reach and recognition. But the larger and more successful you get, the more likely competitors will try to latch onto your coattails by confusing your customers into thinking that they are somehow affiliated with you. Legal ways of protecting your business/service/product name range on a spectrum from weakest/smallest geographic protection, to strongest/largest geographic protection. So, from worst to first, here they are:
1. Vanity Plates
Ok, this isn’t actually a recognized way of protecting anything. But hey, at least the friendly folks at the DMV will know your business name!
2. Registering a Fictitious Business Name (also known as a “Doing Business As” name or DBA)
An FBN is a requirement if you want to use a name different from your own name while you are a sole proprietor (i.e. haven’t formed a corporation or an LLC yet), or different from your official corporate or LLC name. For example, if your name is Jon Snow, but you want to sell ice door to door under “King North Ice,” you would have to apply for an FBN.
FBN registration is handled at the city or county level, so you will have to look to your local county or city clerk’s website for the documents and information required to register. FBN registrations are typically inexpensive, but only last for a few years before you have to renew them (typically five years).
In terms of brand protection, FBN’s should be thought of as the introductory phase. Under trademark law, you begin to build trademark protection for your business as soon as you start using your name along with your goods/services “in commerce,” meaning when you offer your goods/services for sale to the public. This protection is initially limited to the geographic area in which you have sold your goods/services (i.e. where consumers would recognize that your goods/services carry that particular name). Thus, registration and use of an FBN will create a public record of your claim to that name, and could dissuade others from using it.
However, just because you have registered your business’ name as an FBN does not mean that you have a protectable trademark. This is because you can register almost any name as an FBN with your city/county clerk, as long as it isn’t already registered. The problem lies in the fact that you may have just registered a trademark owned by someone who has been using the mark longer than you. If this is the case, you could be in for a sharply worded surprise from the other trademark owner’s attorney. Before settling on, and investing in, a business name, you should conduct a clearance search to determine whether anyone else has used the name, or one confusingly similar to it, before you.
If you are a sole proprietor operating under a name that isn’t your own personal name, or own an LLC or corporation and are using a different name on contracts or in advertising, you should look into obtaining an FBN, or find a helpful attorney to assist you.
3. Forming an LLC or Corporation
In order to form an LLC or corporation in your state, you must file formation documents with the Secretary of State’s office, or your state’s equivalent. In addition to the liability limiting shield this step provides, it also locks down your business name, and some confusingly similar ones, in your state. This is because, in most states, the Secretary of State will refuse to register another business with a name identical or potentially confusingly similar to yours.
Similar to an FBN, this is a useful initial step in starting to build protection for your mark. However, as with the FBN filing, forming an LLC or a corporation does not necessarily entitle you to protection if you are using a name confusingly similar to one someone else is already using. For example, you could form a corporation in California called “Noogle, Inc.” for your new startup search engine company. The Secretary of State would allow this, because (currently) there are no other corporations using that name in California. However, once you start branding your search engine as “Noogle,” you’d better be prepared to face down the might of Google’s legal department for trademark infringement. It is for this reason that we always recommend doing a trademark clearance search before forming your business.
4. Registering Your Trademark with Your State
A rarely used registration process, state registration (as opposed to federal registration with the United States Patent and Trademark Office (USPTO)) grants you trademark protection within your state (or whatever state you choose to register in).
We should take a step back and reiterate that registration is not required to obtain rights to your trademark – only “use in commerce.” The primary benefit of registration is that it expands your geographic scope of protection by giving you a “presumption” of ownership. When you start using a mark to brand your goods/services in your city, you are entitled to assert trademark protection anywhere where people recognize your mark and associate it with your products. If you never register it, your protection will be limited to these geographic pockets, meaning that someone could start using your mark in the neighboring city, assuming you hadn’t sold anything in that city and no one had heard of your mark there.
State registration takes your mark’s small geographic scope and amplifies it to the entire state. With a state registration, a court will give you the benefit of the doubt in a trademark dispute with an infringer despite the fact that you may never have used your mark in their market.
State registrations are cheaper than federal trademark registrations, but this mainly reflects the fact that federal trademark registrations provide protection throughout all 50 states, whereas state registrations only provide you with protection in the state in which you registered. If you only register your mark at the state level, you will have a much harder time trying to stop an infringer using your mark in any of the 49 other states in which you did not register.
5. Registering Your Trademark with USPTO
Federal trademark registration provides the most significant protection you can obtain in the U.S. Like a state registration, a federal registration takes your mark’s (presumably) small geographic scope, and amplifies it to the entire nation. You could, theoretically, obtain the same level of protection without registration by “simply” using your mark in every single city and town in every single state in the U.S., but we’re guessing you don’t yet have the resources to do that.
The federal trademark registration process is somewhat of a long gauntlet, filled with technical and procedural traps into which your application can fall causing significant delays or even forced abandonment. More information on the process can be found in our article here. A successful federal registration is an extremely valuable asset for your business. It provides two main benefits, or what we like to refer to as a “wall” and a “cannon.” The “wall” analogy stems from the fact that a mark registered with the USPTO will serve as a barrier for other trademark applicants without you needing to do anything (i.e. the USPTO will cite to your mark to prevent other, potentially confusingly similar marks from registering). The “canon” analogy refers to your ability to use your registration to “fire off” cease and desist letters to others who are using your mark without your permission. You can even use your registration to have social media posts on Instagram, Pinterest, and Facebook pulled (something that is more difficult to do with an unregistered mark).
Once you have obtained your federal trademark registration, you should not simply sit on your laurels and assume your work is done. Federal trademark registration can be lost if someone else can prove that you took no affirmative steps to protect your mark (e.g. by sending cease and desist letters, entering into written licensing agreements, or suing for trademark infringement). There are numerous affordable trademark monitoring options available, which automatically scan the internet for infringing uses of your mark, and provide you with a report so that you can take action.
6. Registering Your Mark Internationally
If you intend to expand your brand internationally, you will need to consider registering your mark in all of the countries in which you be selling your product/service. As we’ve stated before, trademark protection is geographically based, meaning that a U.S. federal registration will not entitle you to stop someone from using your mark on identical products in, for example, Ireland or the U.K.
Fortunately, there are systems and processes that allow you to register your mark in multiple countries at once, without having to hire local counsel in these countries to file individual trademark applications. The most famous of these systems is the Madrid Protocol, which allows you to use a base mark registration (e.g. a US federal registration) as a springboard to obtain trademark protection in any or all of the countries around the world that have signed up to this system (currently 98 countries). Madrid Protocol trademark filings are, necessarily, more expensive than federal registration. However, the cost is a fraction of what you would pay (both in registration fees as well as search and legal fees for local counsel) to register in each country individually.
For more localized registrations, regional systems for trademark registration also exist. Like the Madrid Protocol, these systems allow you to obtain trademark protection covering multiple countries with just one application. Some examples are:
- BENELUX – trademark protection covers the Benelux region (Belgium, the Netherlands, and Luxembourg.
- EUTM – trademark protection covers the 28 countries of the European Union.
- ARIPO – trademark protection covers the 19 member nations of the African Regional Intellectual Property Organization.
- ASEAN – currently the Association of Southeast Asian Nations does not have a unified trademark application system. However, there have been ongoing talks of implementing such a system. At the moment the only tool provided is a unified search function, which allows you to search for trademark availability throughout all 10 member nations.
OK, Got It… I Think
Ultimately, the amount of trademark protection right for your business will depend on your current resources as well as your future expansion goals. It is very important to consider this aspect of your business as early on in your growth process as possible. Failure to clear your mark at the start could very well result in you having to rebrand a year or two down the line, costing you not only the wasted advertising dollars spent getting your mark in front of people’s eyeballs, but also the recognition and trust of your customers.
By: Kieran de Terra, Esq. – 04/09/17
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Photo Credit: Jackie Wonders