A trademark is a sign, mark, or indicator used by an individual, business, or organization to identify a product or service as its own and to distinguish the product or service from those of its competitors. A business name generally can be protected as a trademark under federal and state trademark law.
Trademark law is designed to avoid consumer confusion over the trademarks that businesses or other organizations use in connection with their goods and services. Stated briefly, trademark law makes it unlawful for a business to use a trademark (e.g., a slogan, a logo, a name) in connection with a good or service if that use is confusingly similar to another business's use of a trademark. To see how this works, imagine a consumer - Sally. If Sally buys a Dell computer, she can be pretty sure that the computer was made by Dell Computer and nobody else. She can take Dell's reputation into account without worrying that a knockoff company is making shoddy computers with the Dell logo on them because trademark law prohibits that kind of confusing commercial activity and it gives Dell the right to sue for money damages and an injunction if someone does it.
As a general rule, if someone in a similar field to yours is already using a particular business or organization name, you should not use it, nor should you use a name that would be confusingly similar. Traditionally, there was nothing to prevent someone from using a trademarked name in a completely unrelated field or industry (for instance, Delta Faucet and Delta Airlines) because there was no possibility that consumers would confuse one for the other. However, the emergence of something called "anti-dilution" law means that the owner of a "famous" trademark (it means pretty much what is sounds like) can prevent you from using it even in an unrelated industry. Therefore, it probably would not be a good idea to call a blog "Kodak News" or "McDonald'sBlog," unless your website is actually about Kodak or McDonald's (in which case you should read Using the Trademarks of Others section closely). Traditionally, the law also permitted multiple companies to use a given name in different geographical areas of the country, but the global nature of the Internet breaks down the importance of geographical isolation and makes it more likely that an Internet use of a name or trademark could be confusing regardless of where the brick-and-mortar businesses or organizations are physically located. Thus, you probably want to steer clear of a name that is the same or similar to a name used by someone else in your field, even if that person or organization is located far away from you.
The process of naming your business and securing trademark rights can be summarized in three basic points:
Choosing a distinctive name is important from a business perspective, but it is also important if you want trademark law to protect your business name. A business name is potentially a trademark protected by the law, but this protection depends on the type of name you choose.
As a general matter, the more unique or distinctive the name is, the greater trademark protection it receives. Fanciful marks (made-up words like "Kodak"), arbitrary marks (existing words used in a way unrelated to their normal meaning, like "Apple" for computers), and suggestive marks (those that hint at a quality or aspect of the product or service, like "Netscape") receive the highest level of protection. You can register these kinds of trademarks immediately, without any evidence of "secondary meaning" -- i.e., proof that, through your use of the name in commerce, the public has come to identify it specifically with your good or service. Similarly, in the event of a lawsuit, you would not need to produce evidence of secondary meaning in order to make out your case.
In contrast, a merely descriptive name can only receive full trademark protection after it acquires secondary meaning. Some examples include names that describe the product or service directly, such as Speedy Rental Car, or one that merely uses a person's name, such as Smith Computers or Jane's Collectibles. Terms that describe the geographic location of a good or service, like the New York Times, also are considered descriptive, and they can be protected as trademarks only upon proof that through use they have acquired secondary meaning. If you choose a merely descriptive name for your citizen media site or blog, you would not be able to register it at first, and you would not be able to successfully sue someone for using a confusingly similar trademark. You might be able to register it and/or bring a successful lawsuit at a later date, however, assuming that Internet users at some point come to identify your business name specifically with your work (i.e., it acquires secondary meaning).
Lastly, a generic name can never receive trademark protection. A generic name is identical to the product or service to which it attaches. For instance, calling a business that hosted email accounts "email" would be a generic name. Keep in mind that a term can be a generic name for one product or service, but a valid trademark for another. For instance, "Apple" is a generic name for selling apples, but a valid trademark for computers, and "Bicycle" is a generic name for selling bicycles, but a valid trademark for playing cards. Some geographical terms like "swiss cheese" and "French fries" are also generic because they are synonymous with the item itself. However, this does not mean that all geographical names are generic.
Choosing a business name presents a special problem for a community journalism site or blogger with a regional focus, where using a geographical or other descriptive term makes intuitive sense. After some thought, you may decide that the appropriate descriptive name is more important to you than strong trademark protection. Or, you may come up with a creative way of using a geographical term in a distinctive way (e.g., h2otown). Be aware also that your descriptive name may obtain secondary meaning should your site prove an influential and often-visited source of information -- think, for instance about the New York Times. So, keep in mind that you may start out with a business name that enjoys little protection under trademark law, but the amount of protection may grow over time.
Once you have chosen a business name, you should make sure that someone else is not already using it in a similar field. The easiest first step is to search an Internet search engine for your proposed name. If it is a common word that brings up a lot of results, add keywords relevant to your business or organizationto see if any similar enterprises have adopted the same name. If you see any other websites doing work similar to yours, you should consider choosing a different name. When you consider whether something is "work similar to yours," take a broad view. This could be anything from a journalism site, a blog, some kind of interactive web service, something tech-y with a heavy online presence, etc. There is little certainty in this area, and you will just have to do your best in making the call. The same goes for all the searching described below -- the task is to weed out names being used by people doing something similar to you, broadly construed.
Next, you should look in TESS, the federal trademark database. Search for the name you're considering as well as close or obvious variations. If anything comes up, check to see if it is "LIVE" or "DEAD." If a mark is canceled, abandoned, or expired ("DEAD"), it probably is safe to use it, but you should do a little extra research to make sure that the company is not still using it in reality. If there are currently registered marks ("LIVE"), look to see with what goods or services the registering company or person is using them. If the company or person is not doing something similar to you, broadly construed, you can probably use the name. However, if the name is famous (i.e., it's a household name like Google or Volkswagen or Prince), you should avoid it. Even if a court would not ultimately conclude that your use of the name constitutes trademark dilution, large companies with famous marks can be very aggressive in policing the use of their trademarks, and they are likely to have highly trained lawyers to make your life difficult. In any case, if you choose to use a name that someone else has registered in connection with a different kind of business, be sure not to use a similar logo, design, or color scheme.
Even after checking the federal database, you're still not necessarily in the clear. Each state and the District of Columbia has its own trademark registry. You can find out where your state's registry is at FindLaw's State Trademark Information page. States have their own trademark laws, which are generally similar to federal law and can be just as powerful if you are sued (or choose to sue someone else). You should perform a search for your business name in your own state and any other state in which you particularly expect to do business or become involved (beyond simply disseminating information to residents of a state via the Internet). To be completely thorough, you would have to search each state's database individually, which would be tedious and time-consuming. You can decide whether this is worthwhile. You can also pay an attorney or one of several Internet-based services to conduct a trademark search for you. FindLaw has more information on hiring a professional firm to conduct a trademark search.
Even if you find nothing through all of these searches, it is still possible that someone somewhere is already using the name you intend to use. This is true because federal and some state trademark laws protect unregistered trademarks, and there is no comprehensive list of all unregistered trademarks in use. The searches described above are the best you can do, and if they turn up negative, the chances that you will run into trouble are greatly reduced.
There are three ways to secure your rights in your trademark: (1) use the mark in commerce in connection with a good or service; (2) register the trademark with your state; or (3) register the trademark with the United States Patent and Trademark Office ("USPTO").
Once you use a trademark in commerce in connection with a good or service, you begin to acquire what are called "common law" rights in the mark, so long as it is not confusingly similiar to or dilutive of another's mark. The common law rights you gain in a trademark through use are limited to the geographic area in which you have actually used the mark, or those areas into which you have demonstrable plans to expand your use (the so-called "zone of natural expansion"). This limitation is less important for online ventures, however, as availability of your services over the Internet gives rise to a presumption of national trademark rights. It is important to note that if someone else is already using a confusingly similiar mark, you will be unabale to obtain rights in your mark and could potentially be liable for trademark infringement or dilution. If you intend to obtain rights in a trademark through simple use in commerce, then you must be sure to do an effective search of existing trademarks before you begin using it in connection with your good or service. Please see our section on Naming Your Business: Searching for the Trademarks of Others for details. For more information on how to acquire trademark rights, see Sarah Bird's excellent post, Trademark Basics: Be First in Your Market, Be Distinctive, and Don't Confuse the Consumer.
You may also choose to register your trademark with your state or with the United States Patent and Trademark Office, but you are not required to do so in order to bring a lawsuit to protect it against infringement or dilution. State registration is likely to be both cheaper and easier than federal registration, but is probably not the best option for online activities, which by definition have a national and international scope. However, if you would like to find out more about your state's registration process, you can contact your state authority responsible for trademark matters.
Registering a trademark with the USPTO puts the country on notice that you are using a certain mark, and also provides additional protections and procedural benefits if you need to litigate your rights. However, this process is fairly long (usually taking a year or more) and potentially expensive (the fees start at $275). We provide more information about the federal registration process below.
Benefits of Federal Registration
As noted above, federal trademark registration is not required for you to protect your trademark. However, registration provides some advantages. Specifically, registering a trademark with the USPTO provides the following benefits:
Because federal registration is expensive, you'll want to weigh these benefits against the out-of-pocket costs of obtaining a registration.
How to Register
Once you have decided to federally register your trademark, you can
file the necessary forms to apply for federal trademark registration
with the United States Patent and Trademark Office online. The cost is between $275-375 per mark for each International Class in which you seek registration, depending upon the filing method you chose.
The USPTO estimates that filling out the form should take about 15-20 minutes, although first time filers are likely to take longer. A federal application must contain at least four things, in addition to the filing fee: (1) the owner's name and address, (2) a clear drawing of the mark (which can be automatically generated from text if you do not have a logo); (3) a description of the goods or services for which the mark is or will be used and the corresponding International Class number(s); and (4) the filing basis.
You can register your trademark for use in connection with more than one set of goods or services, but you will have to pay an additional filing fee if the goods and services you list fall into more than one International Class. The USPTO has available a searchable index of identifications for goods and services that they recommend you use for your application, but you can also type in something else if your product or service does not fit into one of these categories. If your business does not clearly fall within one category of goods or services, you may want to consider filing in more than one class, as this will would give you the greatest protection and flexibility. The downside to seeking registration in more than one class, aside from the additional filing fees, is that you are more likely to encounter a conflict with someone else who is using the mark or a similar one in another field or industry. Furthermore, if you do expand in the future, you can apply for a new registration at that time (unless someone else has already registered the mark in that area).
There are two
different filing bases for a new trademark application: use based, or
intent-to-use. If you have already begun using the trademark in
interstate commerce, you should file a use based application. To do so, in addition to filling out the application, you must supply the USPTO with a specimen showing the mark as it is used in connection with your goods or services, as well as the date(s) on which you first used the mark anywhere and in interstate commerce. If you have not yet begun using the trademark, you should file an intent-to-use
application. You will be required to submit a specimen and date of
first use later in the application process before your mark is allowed
to register.
If this process sounds too complicated for you, you can hire an attorney to do it. Trademark registration is usually fairly straightforward for attorneys who specialize in it, so it is relatively inexpensive.
Within about 3-6 months after you file the registration forms an attorney with the USPTO will examine and research your application. There are several categories of marks that the USPTO will refuse to register, including "immoral, deceptive, or scandalous" marks (such as those including foul language), those that disparage or falsely imply a connection to other people or entities, and marks that are confusingly similar to others that are already registered.
The USPTO attorney may contact you to resolve any issues in your application, by issuing what's called an "Office Action." If you receive an Office Action, you will have six months in which to respond to any issues raised by the examining attorney. If the issues raised in the Office Action are too complex, you may want to hire an attorney to draft your response.
If the USPTO approves your application, it will publish your trademark in the Official Gazette, and anyone who believes that they would be damaged by its registration (such as a senior user of a confusingly similar mark) will have thirty days in which to oppose registration of the mark. If no one opposes (or requests an extension of time to oppose) within those thirty days, the USPTO will either approve your mark for registration (if you have already submitted an acceptable specimen of use) or issue a Notice of Allowance (if your application is still based on an intent-to-use). If the USPTO issues a Notice of Allowance, you will have six months from the date on which it was issued to either submit an acceptable specimen, or request an additional extension of time in which to do so. You can request up to five 6-month extensions of time in which to submit a specimine of use. All told, the registration process can easily take 1-2 years, but once it is approved your rights date back to the day on which you filed your application.
For additional details on registering a trademark, see the Chilling Effects FAQ on Trademark.
Trademark rights can last indefinitely so long as the trademark owner continues to use the mark in commerce to identify goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms upon filing an affidavit of continued use, along with a specimen of use. In addition, between the fifth and sixth years after the date of initial registration, the registrant must file an additional affidavit confirming that the mark is still in use in commerce in order to maintain the registration. If no affidavit is filed, the registration is canceled. At this time, if the mark has been in continuous use in interestate commerce for five years following the date of registration, the owner can file an affidavit of incontestibility that, if accepted by the USPTO, will significantly narrow the grounds upon which a third party can seek to have the registration cancelled.
In addition to renewing your registration (should you choose to register), you need to take some additional steps to make sure that you do not lose your trademark rights:
You can choose to include a trademark notice next to your trademark, but you are not required to do so in order to protect the mark. A trademark notice indicates to others that you claim ownership of the trademark in connection with the goods or services in question, warning them against possible infringement. Any time you believe you have a rightful claim to a mark you may designate the mark with a TM (for goods) or SM (for services). You do not have to register the mark to use these notices. In addition, if you choose to seek federal registration of your trademark, you can use these notices during the registration process. If you obtain a federal registration, you will probably want to use the more powerful ® notice, which can only be used after a successful registration with the USPTO. Even then, you can only use the ® notice in connection with the goods or services listed in your application for registration.