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How To Trademark A Name

By Eric Misterovich

Clients often ask us how to trademark a name. Learning how to trademark a name is a three step process:

1. First, identify a name that is protectable by trademark law. Generic names, such as “Coffee House” for use with a coffee shop, cannot be trademarked. Descriptive names, such as “Computerland” for a computer store, may only be registered after they have acquired secondary meaning, which means that they have been used in commerce for such a long period of time that consumers have come to recognize them as pointing to the business in question. The best trademarks are arbitrary or fanciful. Arbitrary trademarks are common words that are used within a different context, such as “Amazon” for books. Fanciful words are words that are entirely created, such as “Exxon” or “Kodak.” Arbitrary and fanciful terms are the most likely to achieve trademark registrations.

2. Second, research whether the name in question is available. You should first perform a Google search to determine whether there are any companies currently using the same name. Next, you should perform a search of the US Patent and Trademark Office TESS database to determine whether any preexisting trademark registrations or applications will preclude your successful registration of your name as a trademark or subject you to the risk of a trademark infringement lawsuit.

3. Finally, you should file a trademark application. In the United States, trademark applications may be filed on a 1A (currently used in commerce) or a 1B (intent to use in commerce) basis. If you file a trademark application in the United States with the United States Patent and Trademark Office, you can also use the application as the basis for foreign trademark applications under the Madrid Protocol, which is an international treaty.

Since searching for and trademarking a name is a long and confusing process, we always recommend that you use an attorney when trademarking a name. An attorney-authored trademark clearance can help you avoid a trademark opposition or a trademark infringement lawsuit. Since the US Patent and Trademark Office assigns an examining attorney to review (and sometimes prohibit) your trademark application, doesn’t it makes sense to have an experienced trademark attorney on your side as well?

If you would like to trademark a name, contact the expert trademark lawyers at Revision Legal today at 855-473-8474.

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