James R. Balmforth: Should I Trademark A Business Name or Logo?

Yes, you probably should. But your should call an IP Lawyer at Ascent Law just to be sure.

What Is a Trademark?

A trademark identifies the source of goods or services. Business names, product names, logos and labels can all be trademarks. You acquire a trademark by using your mark in commerce—in other words, using it when you conduct your business. For additional protection, you can register a trademark with the U.S. Patent and Trademark Office (USPTO).

Should I Trademark My Business Name?

Your business name is one of your company’s most important assets. It’s a symbol for your reputation, and it’s how you’re known to the outside world. If a competitor starts using your name, you’re not likely to be happy about it.

But what if you trademark your business name? Will that prevent other businesses from using it?

The answer is that a registered trademark gives you the exclusive right to use your business name nationwide in connection with the goods and services you’ve identified in your registration, and allows you to enforce your trademark by filing a lawsuit in federal court. Those are strong protections, but it will be up to you to monitor unauthorized uses of your name and take steps to stop them.

Whether you should register a trademark for your business name depends on the geographic scope of your business, the type of name you have and whether you have the time and money to file a trademark application.

Are you running a new business, and looking to protect the equity in your name and your logo? Filing for federal or state trademark protection may be the right move for you. However, we are often asked whether it makes sense to trademark the name or slogan of a business, the logo for the business, or both. This article describes the differences between these various types of trademarks and the considerations for entrepreneurs interested in trademark protection. To better illustrate these terms, we’ve come up with the hypothetical company YanKenPo, Inc., whose officers are considering trademarking YanKenPo’s name and logo. The logo for the company contains the word “YanKenPo” in a stylized font along with other unique design elements.

Advantages of Trademarking a Business Name

If you use your trademark but don’t register it with the USPTO, you have common law trademark protection. You may be able to stop other people from using your mark, but only in your immediate geographic area. That may be good enough for a small local business, but may not be much help if you have an Internet-based business with Nationwide trademark protection

 Your trademark ownership becomes part of the USPTO’s database, creating a public record of your ownership and the date you began using the trademark

 People who conduct a trademark search will see your trademark and may be less likely to use it

 You can file a lawsuit in federal court to enforce your trademark

 Registration creates a legal presumption that you own the trademark and can use it for the goods and services listed in your trademark application. This is helpful if you ever need to sue someone to enforce your trademark

 U.S. registration may allow you to register your trademark in other countries

 Registration gives you the right to use the registered trademark symbol, ®

The numerous advantages of trademark registration have led to millions of trademarks being registered with the USPTO.

However, not all business names are eligible for trademark registration.

What Kinds of Names Can Be Trademarked?

The USPTO will only register business name trademarks if they are distinctive and not likely to be confused with an existing trademark.
The more distinctive the name is, the easier it is to trademark.

 “Coined” or made-up names like “Xerox” are the easiest to trademark and receive the strongest protection. Names that use existing words in unique ways—such as “Apple” computers—also make strong trademarks.

 Names that suggest a product without describing it can also be trademarked. Examples are ‘Greyhound” bus and “Goo Gone.”

 Descriptive business names are the hardest to trademark. These include personal names, such as Ben & Jerry’s ice cream; location names, such as “Chicago Pizza;” and names that describe a product or service, such as “Best Carpet Cleaning.” The USPTO won’t register a trademark for a descriptive name unless you can also show that the name has been used so much that people automatically associate it with your product or service.

The USPTO may also deny your registration if your business name is confusingly similar to an existing trademark. A confusingly similar name sounds like the name of another business that offers similar products or services, so that people might think they are related. For example, Omega Hair Salon and O-Maya Beauty Shop might be confusingly similar because the names sound alike and both businesses offer beauty services. But Omega Car Wash would probably not cause a likelihood of confusion because no one expects the same company to offer both hair care and car washes.
How to Trademark a Business Name
Before attempting to register a trademark with the USPTO, you should conduct a trademark search using a trademark search service or the USPTO’s Trademark Electronic Search System to determine whether anyone else has registered a similar trademark for a similar type of goods or services.
If you conclude that your name is eligible for trademark registration, you can apply to register your trademark online. If you register your name as a standard character mark, your trademark business name will cover your name displayed in any font, color or design you choose. You can also register your name as a special character mark that depicts your name in a particular color, font or design—but your trademark will extend only to the exact design you submit.

Other Ways to Protect Your Business Name

What if you can’t, or don’t want to, trademark a name? Your business name may still have some valuable protections within your state.

If you form a business entity such as a corporation or Limited Liability Company, your state will not allow another business entity to be formed with the same name. If you do not form a business entity, you may still receive this protection by registering a trade name or “DBA” with your state.

If your business name is eligible for trademark protection, federal trademark registration is a fairly easy process that gives you the right to enforce your trademark nationwide and can help deter others from using your name. Registering is an especially good idea if your business operates in more than one state and you’re concerned that competitors will try to use your name.

Should You Trademark a Logo and Business Name Together?

• A small business needs to protect its intellectual property, which includes its business name and logo. These items distinguish the business from the competition by generating brand recognition and a loyal customer base. Over time, your customer’s associate your logo with your company, as Nike has with it’s swoosh and McDonald’s has with its arches. Generally speaking, you should apply for trademark registrations for your business name, logo, slogan and designs separately.

Keeping your logo and business name separate allows you to use either property on its own. Trademark protection only extends to the trademark registration as it’s submitted to the United States Patent and Trademark Office. Federal trademark registration for your business name and logo together requires you to use them together at all times to have legal protection under federal law. Many circumstances, such as advertising or marketing strategies, necessitate the use of one element or the other. Keep them separate to simplify your business operations.

Only in rare instances would you want to change your company name. But you may decide to rebrand your logo to associate your name with new products. Registering your name and logo together would require a new registration for your business name if you overhauled your logo. The duplicate registration could cause problems during the trademark registration and delay your rebranding campaign.

The only true benefit you receive when registering your name and logo together is lowered cost. Each trademark registration costs approximately $300. By separately registering both elements, you are up to $600. You save money in the short term registering the items together. In the long term, you pay more when you rebrand your products or change your business name. Spend more now so you don’t end up regretting it later.

What’s The Difference between Trademarking a Name versus a Logo?
You can register your business name or slogan as a “standard character mark”, which is any combination of letters and numbers with no reference to style, design, font or color. According to the U.S. Patent and Trademark Office, the rights in a standard character mark “reside in the wording,” allowing you to “use and protect the mark in any font size, style or color.” Standard character marks offer the broadest possible rights of any single form of trademark protection, but do not protect special designs and coloration.

A “Standard Character Mark” will provide protection for the name of the business or the slogan for the business, and provides the exclusive right to use the name/slogan in any form in combination with the categories of goods and services that we identify in the application.

You can also register a stylized design known as a “special form mark,” or “design mark.” Special form marks protect a specific combination of stylized lettering, a design element such as a logo, or both. This type of protection is ideal for companies looking to protect a distinctive visual aesthetic or signal, but it is fairly limited. Special form rights protect only the particular style registered. If you want to make a design change, you’ll have to file again.

A “Design Mark” will provide protection for the business’ logo. This will be a trademark application for the black and white version of the logo so that you have protection over any color versions of the logo as well.

Which One Should I Trademark?

It depends. Higher value tends to lie in name recognition rather than familiarity of a logo. Since logos change more often than names, it usually makes more sense to register a standard character mark to protect the business moniker itself. With their generous set of rights, standard character marks allow you to preserve near-complete control over your business name. Because standard character marks protect the mark in any font size, style, or color, if your logo contains the name of your business, then nobody who offers the same goods or services would be able to copy your logo even if you only registered your standard character mark. However, if your logo commands attention and a good deal of customer recognition, or if you are concerned about competitors using a similar logo, you may want to consider trademarking it.

Now, let’s go back to our hypothetical company, YanKenPo. If YanKenPo registered as a standard character mark, then YanKenPo’s competitors would be prohibited from using the name “YanKenPo” (or any confusingly similar name) within the same categories of goods and services offered by YanKenPo. This protection would even extend to the company’s logo because the logo contains the word “YanKenPo.” However, if YanKenPo did not obtain protection under a design mark application as well, another company may be able to do a similar logo but with a different word without infringing on YanKenPo’s registered trademark.

Trademark Lawyer Free Consultation

If you are here, you probably have a trademark issue you need help with, call Ascent Law LLC for your free intellectual property law consultation (801) 676-5506. We want to help you.