Names are important to businesses. It is from a name that we derive a brand and therefore it is important to distinguish your company’s name within your industry. Trademarks help in this process. The underlying purpose of a Trademark is to prevent confusion among consumers in any given marketplace between goods and services. If there are two companies with similar names operating in the same market and doing similar things, then the the consumer has a high likelihood of being confused. The following guide lays out how to trademark your company’s name.
A Trademark is going to run you $280 – $ 330 in filing fees alone, so early on you will need to make a determination of whether you need a Trademark right away.
1. Trademark Search
- What is it? When picking your company name you should always do a thorough internet and trademark search. The last thing you want is your own company’s name to infringe upon another trademark.
- When to do? Always.
- What do to? Believe it or not, law firms will charge $1000 for a comprehensive trademark search. Even LegalZoom will charge you $500. We prefer Markify, a FREE automated trademark search service (see below). You are looking for three main factors in your search: 1) the name, 2) the industry (also called the industry class), and 3) the goods and service description. The more your name shares similarities among these three factors with another trademarked name, the higher likelihood that some trademark infringement exists – but it is not an exact science.
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2. First Trademark Application (Online USPTO Website)
- What is it? It is usually in a company’s best interest to file multiple trademarks for a single name. This allows them to capture their company’s growing portfolio of goods and services and gain protection in related industries. Some companies maintain hundreds of trademarks. As a bootstrapping startup or small business, you will most likely be OK with just one. The online US Patent and Trademark Office trademark application allows you to complete your trademark application online and pay electronically.
- When to do? Always.
- What do to? Your biggest challenges when filing out a Trademark application are deciding on the industry class under which you want the trademark filled (See USPTO Class List and Descriptions ) and choosing the goods and services description which describes what your company is going to do. Goods and service descriptions can range from a single sentence to exhaustive paragraphs. A good starting place is to see what your competitors used for their first Trademark goods and services descriptions. The USPTO also provides a list of “ Acceptable Industry Class Identification and Goods & Services Descriptions ” which you can choose from to make this process easier. If you decide to write your own description, it will cost you an extra $50. There is a growing camp of attorneys who believe that the risk associated with choosing a USPTO approved description is minmal – and that once the company is starting to make money they can file more trademarks to be more inclusive. Once you submit and pay for your Trademark application, you will be sent a receipt via email – the approval process can take approximately 3 months.
3. Check Trademark Status
- What is it? While you will be informed via email or mail of any problems with your application or an approved Trademark, you may desire to check on your applications status.
- When to do? From time to time.
- What do to? Using the registration number accompanying your email application receipt (seen above) you can check the status of your trademark with the USPTO.
4. Additional Trademarks
- What is it? As your company grows, or you want to further protect your name in other related industries, you may wish to file other trademarks.
- When to do? At your discretion (or your attorney’s).
- What do to? Follow the procedures above.
5. Trademark Monitoring
- What is it? It is one thing to have a trademark, it is another thing to enforce it. Again, the reason one gets a trademark is so that another entity cannot operate in their industry with similar goods or services under the same or a similar name. Therefore, you should monitor the marketplace to make sure that trademark infringement is not taking place.
- When to do? Perpetual.
- What do to? There are a number of online trademark services. We prefer Markify, which offers a complimenting FREE Trademark monitoring service for 1 Trademark – perfect for a startup. If your lawyers are not using this, then you should let them know about it.
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Just to follow up with this…immediately after creating this blog post we filed for our trademark. In short, with the exception of the Depart Co-Founder blog post we are using our own material.
Nice concise article that covers all the important points.
I’ve recently come across Markify and it looks to be brilliant. It’s a pity it only covers the USPTO and EU CTM databases at the moment – hopefully they add more databases down the track.
One thing to be aware of is that Markify only tells you about conflicting registered / pending trademarks. An attorney or search company can also do marketplace searches to check for conflicting unregistered (common law) marks.
Great blog btw – cheers, Victor