How to Register a Name as a Trademark

June 25th, 2012

If you want to protect your name as a trademark, there a numerous steps that you need to go through. It is not as simple as simply filling out a form. If you do anything incorrectly on your trademark registration application, your trademark, even if it gets registered, because it’s of course based on the information that you and your trademark attorneys provide, could be invalid. So you could have spent all that time and money for nothing, because somebody challenges your trademark down the line and it turns out you provided some misinformation, either intentionally or innocently. Boom, your trademark is invalid.


How do you register a name as a trademark? How do you register a logo or slogan as a trademark? How do you register a design as a trademark? These are questions that we hear all the time as trademark registration attorneys who specialize in getting your brand registered as a federal trademark at the United States Patent and Trademark Office, so that you get all the benefits under the U.S. trademark law of having a trademark registration.

My name is Trademark Registration Attorney Enrico Schaefer, and we here at Traverse Legal, we hear these types of questions all the time. Of course the answer is that there is a multi-step process that you need to go through in order to get your trademark registered right.

If you want to protect your name as a trademark, there a numerous steps that you need to go through. It is not as simple as simply filling out a form. If you do anything incorrectly on your trademark registration application, your trademark, even if it gets registered, because it’s of course based on the information that you and your trademark attorneys provide, could be invalid. So you could have spent all that time and money for nothing, because somebody challenges your trademark down the line and it turns out you provided some misinformation, either intentionally or innocently. Boom, your trademark is invalid.

That is a terrible result. It does not cost a lot of money to register your name as a trademark. You need to do it right. It’s an important business asset for your company. Keep in mind Apple’s trademarks are worth 50% of its overall market value, and that is true for many companies. The trademark value as an asset actually exceeds the value of all their tangible assets, all of their revenue assets. These are critically important things for companies like yours.

So, how to register a name as a trademark begins with the question of is it a new name that you’re thinking about using or is it a name that you’ve been using for many years, and now want to get that name registered?

There’s very important difference is between the approaches that would apply to those two scenarios and the reason why is this. If you’ve already been using the name for years, well, it’s very difficult to change your name midstream. That name is probably incorporated into your domain name. It’s part of your overall marketing. All of your advertising revolves around that name.

So, in that instance, what you are going to do is a trademark availability opinion from your trademark or registration attorney, who’s going to tell you whether or not it makes sense to go through with registration. Here’s the reason why. If it turns out that you file for registration, there are companies that monitor those registrations filings.

If it turns out that you trigger a really big company to come after you because they’ve got superior trademark rights and they believe your trademark is confusingly similar to theirs, they can end up shutting down your use of the name. So, trademark registration could actually result in a huge step backwards for your business or company.

So, once you get that availability opinion back and the trademark attorney says that your name is available for registration, that the risk of triggering a threat letter is small, then you could go through the process of understanding the business model in order to understand what international class you are going to register in. What your description of goods and services are. What specimen will work for your registration application, and what are your first uses of the trademark ever and in commerce, so that you can identify your first use.

These are really important items. Now let’s say that you’re going to be choosing a new name for your new startup company or business, and you’ve got lots available to you but you got one you really like. The best thing for you to do at that point is to contact a trademark registration attorney who understands trademark law. Ask them whether or not the name you are considering for the use of your company name or brand is in fact available. There are two things that you’re typically looking at as a company in this situation.

The first is, is there a domain name available which incorporates that word so that you can actually live in a domain name that matches your trademark. The other is whether or not there is a previously registered or unregistered trademark out there that might be too close to your mark within your international class, goods and services, in order to preclude registration.

You don’t want to invest in a new trademark, a new name, a new logo, a new slogan, a new brand, a new design, if two years later you’re going to learn that someone else had something that was confusingly similar before you did. So, before you make that investment of tens of thousands of dollars or hundreds of thousands of dollars in your brand, spend a little bit of money to make sure that it is a brand which is available for use in commerce without infringing someone else’s trademark.

If in fact it comes back that there are problems then you’re going to go back to square one. You’re going to start looking for a new name, slogan, brand, design, to match what your business model is going to be.

Another word to the wise, a good trademark lawyer will help you understand what are strong trademarks and what are weak trademarks. It’s always tempting to want to pick a descriptive word that describes your business for your trademark so that way, customers will know what you do. But those typically are weak trademarks. Nike, Microsoft, these are great brands because they’re completely made up words.

Footlocker, pretty good brand because it in fact doesn’t tell you exactly what they do but includes the word foot, which is related to shoes, so perhaps a little less strong brand than a completely made up word such as Nike.

So let’s just review. You want to know how to trademark a name, a slogan, a logo, a byline, a design. You’re starting point is to contact a Internet lawyer who understands the process and trademark law to get you registered.

Once you go through that process and you find your name, then you’re going to devote the advertising and marketing dollars you need in order to create consumer awareness, so when they see that name they think of you.

My name is Trademark Registration Attorney Enrico Schaefer. We’ll see you next time.

Share Button

Leave a Reply

Official Trademark Clearinghouse Agent
Domain attorney recommended by Domaining.com
© 2011 Traverse Legal, PLC. All Rights Reserved.
Traverse Legal on LinkedInTraverse Legal on FacebookTraverse Legal on Twitter
Events & Conferences:
  • International Trademark Association 2011, San Francisco, California
  • Cyber Law Summit 2011, Las Vegas, Nevada
  • Game Developers Conference 2011, San Francisco, California
  • DOMAINfest 2011, Santa Monica, California
Recent Attorney Speaking Engagements:
  • South By Southwest 2010 SXSW Interactive Conference, Austin, Texas
  • West LegalEdcenter Midwestern Law Firm Management, Chicago, Illinois
  • Internet Advertising under Part 255, Altitude Design Summit, Salt Lake City, Utah
  • Online Defamation and Reputation Management, News Talk 650 AM, The Cory Kolt Show, Canada Public Radio Saskatewan Canada
  • Alternative Fee Structures, Center for Competitive Management, Jersey City, New Jersey
  • FTC Part 255 Advertising Requirements, Mom 2.0 Conference, Houston, Texas
  • Webmaster Radio, Cybersquatting & Domain Monetization, Fort Lauderdale, Florida
Notable Complex Litigation Cases Handled By Our Lawyers:
  • Trademark Infringement, Milwaukee, Wisconsin
  • Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan
  • Internet Defamation & Online Libel Indianapolis, Indiana
  • Trade Secret Theft, Chicago, Illinois
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Miami, Florida
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Eastern Dist. of Virginia, Alexandria
  • Stolen Domain Name, Orlando, Florida
  • Commercial Litigation, Tampa, Florida
  • Copyright Infringement and Cybersquatting Law, Grand Rapids, Michigan
  • Mass Tort Litigation, Los Angeles, California
  • Stolen Domain Name, Detroit, Michigan
  • Adwords Keyword Trademark Infringement, Los Angeles, California
  • Trademark Infringement & Unfair Competition, Boston, Massachusetts
  • Non-Compete Agreement and Trade Secret Theft, Detroit, Michigan
  • Mass Tort, Philadelphia, Pennsylvania
  • Mass Tort, Tyler, Texas
  • Insurance Indemnity, New York
  • Copyright Infringement, Detroit, Michigan