Question:

How can I protect my business/brand name so that other people don’t use it without my permission?

Answer:

There are a number of different ways to lock down a business name, but only some of them relate to trademark, which is the true way to lock down a business or brand name and prevent others from using it! 

While there are various ways to register and use a name for your business or your brand, only trademark registration provides exclusive rights to that name! And, keep in mind that you can register trademarks in words, logos, combos of the two, and it doesn’t just have to be the brand name or business name, it can be a slogan or a product/service name, too! For the purposes of this article, we will refer to a “mark” as all of the above (words, logos, slogans, product/service names, etc.). 

Let’s dive into the ways to register / own rights to a mark. 

One way to provide local registration and rights to a mark is through registering a Fictitious Business Name (also known as a “Doing Business As” name or DBA).

A FBN is a requirement if you want to use a name different from your own name while you are a sole proprietor (i.e. haven’t formed a corporation or an LLC yet), or different from your official corporate or LLC name (once you have formed one of those).  For example, if your name is Prince, but you want to sell albums under the name “The Artist Formerly Known as Prince” you would have to apply for a FBN. Why you ask? Well, it’s the law, and Prince’s bank probably won’t cash checks made payable to “The Artist Formerly Known as Prince” without paperwork showing the registration of the FBN for that name. 

FBN registration is handled at the city or county level, so you will have to look to your local county or city clerk’s website for the documents and information required to register.  FBN registrations are typically inexpensive, but only last for a few years before you have to renew them (typically five years).

So how much does a FBN protect your rights in a mark? FBN’s should be thought of as the training wheels for mark protection.  Under trademark law, you begin to build trademark protection for your business as soon as you start using your mark along with your goods/services “in commerce,” meaning when you offer your goods/services for sale to the public.  This protection is initially limited to the geographic area in which you have sold your goods/services (i.e. where consumers would recognize that your goods/services carry that particular name).  Thus, registration and use of a FBN will create a public record of your claim to that name, and could dissuade others from using it, but does not give you exclusive rights to your use outside of your local region. 

Let’s hit the high points for FBN/DBAs:

• Local protection only
• Not exclusive
• Inexpensive, but need to be renewed every few years
• Required by law in some circumstances

If you form a limited liability company (LLC) or corporation (INC), you will have state wide registration for the LLC or INC name. 

Your state is the authority that grants the power to operate as a formal legal entity, like an LLC or an INC, so when you register with the state to do so, you are presumably the only LLC or INC in the state with that name! But not so fast, the state offices don’t warrant that they vet names to prevent multiple companies with the same name and there is no legal restriction on an LLC and an INC having the same name, in the same state. Yup, you read that right, you could have Prince Music, LLC and Prince Music, INC in the same dang state, legally! 

Similar to an FBN, this is a useful initial step in starting to build protection for your mark.  However, as with the FBN filing, forming an LLC or an INC does not necessarily entitle you to protection if you are using a name confusingly similar to one someone else is already using.  For example, you could form a corporation in California called “Noogle, Inc.” for your new startup search engine company.  The Secretary of State would allow this, because (currently) there are no other corporations using that name in California.  However, once you start branding your search engine as “Noogle,” you’d better be prepared to face down the might of Google’s legal department for trademark infringement.  It is for this reason that we always recommend doing a trademark clearance search before forming your business – while the state system may not vet names for similarity, companies that police their trademark rights will certainly take notice. 

The end all be all protection throughout the entire country comes with registering your mark with the United States Patent and Trademark Office (USPTO). 

Federal trademark registration with the USPTO provides the most significant protection you can obtain in the U.S.  Obtaining a registered trademark with the USPTO takes your mark that you may have local rights to just by using the mark and amplifies those rights to the entire nation.  You could, theoretically, obtain the same level of protection without registration by “simply” using your mark in every single city and town in every single state in the U.S., but we’re guessing that seems a little more daunting. 

The USPTO process is somewhat long and convoluted, filled with technical and procedural traps into which your application can fall causing significant delays or even forced abandonment. A successful federal registration is an extremely valuable asset for your business.  It provides two main benefits, or what we like to refer to as a “sword” and a “shield.”  The “sheild” analogy stems from the fact that a mark registered with the USPTO will serve as a defense for other trademark applicants without you needing to do anything (i.e. the USPTO will cite to your mark to prevent other, potentially confusingly similar marks from registering).  The “sword” analogy refers to your ability to use your registration to “strike” with cease and desist letters to others who are using your mark without your permission.  You can even use your registration to have social media posts on Instagram, Pinterest, and Facebook pulled down (something that is more difficult to do with an unregistered mark). These are called DMCA takedown notices, check out our resources on those here and here. 

Once you have obtained your USPTO registration, you should not simply sit on your laurels and assume your work is done. Federal trademark registration can be lost if someone else can prove that you took no affirmative steps to protect your mark (e.g. by sending cease and desist letters, entering into written licensing agreements, or suing for trademark infringement).  There are numerous affordable trademark monitoring options available, which automatically scan the internet for infringing uses of your mark, and provide you with a report so that you can take action.

To Wrap Up….

As you can see, there are several ways to protect your marks in this ever increasingly connected digital world, some are better than others and we didn’t address every possible method in this article. For instance, you may want to register a trademark in your state if USPTO registration looks unlikely, or, you may want to register your mark internationally if you have already been successful registering in the U.S. 

The big takeaway we hope you got is that 1) it is important; 2) there are many ways, some more inexpensive than others, to protect your marks; and 3) we’re here to help you navigate these various avenues! Please take us up on our free consultations (email Bertie@inbetterwetrust.com) if you need some trademark guidance.