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Should I Trademark My Business Name or My Logo?

by Clifford D. Hyra on August 31, 2011

Trademarks protect branding- things like your business name and your logo that you put on your products so that your customers know they are not knock-offs or imitations. For a really big business, a brand is worth big bucks and the cost of a trademark registration is small in comparison. So for a big company it is a no brainer to register all their branding- business name, logos, slogans, even names of individual product lines. But smaller businesses are often working on a limited budget. The benefits of trademark registration are not so obviously greater than the cost of registration, which can be close to a thousand dollars, depending on the difficulty of registering the trademark and the law firm used. So, many business owners decide that they want to limit their registration to a single trademark, and are left with a decision between registering their business name and their logo.

Registering Your Business Name as a Trademark

Usually, I recommend registering your business name if you are only going to register one trademark. A business name should be registered with a "standard character claim," meaning that your registration covers your name regardless of the font, case, and any stylistic or graphic elements used. This gives you broad protection and prevents an infringer from claiming no confusion would be likely because its mark uses a different font, etc. Registering your business name with a standard character claim protects you against any use of the name, inside or outside of a logo or design. And for many businesses, their name is the most important thing to protect. After all, your name is what people use when discussing or referring your business to others. And if your logo is minimalist, the other visual elements may not be that memorable anyway. The downside of trademarking your business name alone is that it offers no protection for the design elements of your logo. You still may have common-law rights to your logo, but you would lack the important benefits of trademark registration. Another business could begin using a similar logo with a different business name, and that could be difficult for you to stop.

Registering Your Logo as a Trademark

The advantage of registering your logo is that it protects both the design elements of your logo and your business name (assuming that your logo incorporates your business name). However, there are many disadvantages. For one thing, your protection for your name will be somewhat weakened. Another business seeking to register a logo with a similar name can argue that confusion would be unlikely because of the design differences between the two marks. Such an argument can succeed, particularly if your business name might be considered descriptive of the business you are in. I have successfully made such arguments, and even have advised clients that they could get around a third-party registration if they registered their brand with a certain stylization or design element. Another potential problem is that logos can change over the  years. Even the largest corporations rebrand once in a while. When your logo changes, your old logo trademark registration goes out the window. Now you have to file a new registration for your new logo. Your old registration, if it was in use for five  years, may have become incontestable, greatly strengthening it in legal disputes. Your new registration will not be.

Register Your Business Name - Usually

For the above reasons, I usually recommend that my clients register their business names if they only want to file one registration. An exception might be if their name could run into a conflict that their logo would have a better chance of avoiding, or if the design element of their logo is critical or especially distinctive. However, even if you really like and want to protect the design element of your logo, I would strongly suggest looking into registering both your logo and your business name alone. If you have any questions about the costs vs. benefits, I would be happy to help you answer them!

{ 227 comments… read them below or add one }

Kris 12.16.11 at 1:57 am

Hi, here’s my problem…

I have been running my business for about 5 years now. The business has been in operation for 10 years under the same name. I accidentally let my registration run past due, and it was dissolved. So, someone snatched up my business name.

They have not trademarked the name. I would like to trademark the name, so that I can use it forever. I have no intentions on changing the name, and feel I am the rightful owner of the name…being that I’ve had it registered for 5 years, built the reputation, and grew the business name all by myself.

I’ve actually contemplated speaking to a lawyer about being able to register the name.

My REAL question is this. Does it matter if I change the registered name a bit, and still use my trademarked name and logo? Do I really HAVE to have myself registered exactly as my business name…or can I change it up a bit just to have it?

Clifford D. Hyra 12.16.11 at 2:03 am

Kris,

When you refer to your registration, are you talking about a federal trademark registration? Because it sounds like you may be talking about the corporate name registered with the state.

Anyway, if you have been using a name in your business for 10 years, you certainly have the trademark rights to it over someone who just started using it, regardless of what the corporate names are, at least in your type of business.

Your customer-facing business/brand name does not have to be the same as your corporate name- although if they are different you may need to register your customer-facing name with the state as a dba. It is very common for these names to differ.

Kris 12.16.11 at 2:17 am

Wow, thanks for the quick response!

This is great news to hear. I’ve been stressing out like crazy over it, ha. Mainly because I’ve worked incredibly hard to raise the business name. I was shocked when the state told me I couldn’t register the same name as I always have.

I was actually going to use legalzoom.com to trademark my brand name and logo. Mainly because this experience taught me that I basically never want to get my name stolen…cause I’ve worked FAR too hard. Do you think this is a good idea? I’m only asking cause it’s about $500. But to me, $500 to keep my name safe is worth it. Thanks for the quick feedback, I really appreciate it!

Clifford D. Hyra 12.16.11 at 2:26 am

Kris,

If you want to protect your name from being used by competitors, I do recommend that you get a federal trademark registration. However, I do not recommend that you use LegalZoom. As I understand it, they do not use attorneys for trademark registrations, which means that they are unable to advise you with regard to properly filing your application and, if your application runs into any trouble, cannot help you with that either. Several of my clients came to me for help after running into problems with LegalZoom applications.

Why don’t you give me a call or send me an email, I can give you much better service for a very similar cost.

James 01.03.12 at 3:09 pm

Hi,

A partner and me established our entertainment company as an LLC and are now looking into trademarking. We understand that we should, indeed, register the company name, but we want to also register our logo, which does strongly coincide with our company’s name. We will be rolling out a website soon, doing business locally, making shirts, etc. We are really trying to establish our brand utilizing our logo as well as the name itself. However, we are small right now and my partner and I are seeking insight as to the best route to take early. What are the valuable aspects of an “all-inclusive” trademarking (name and logo)? What is our best option? what are the costs/benefits?

Jim 01.05.12 at 4:07 pm

I have a question to registration. Our logo has changed and was registered and we now have a new logo. We also registered our business name as a standard character. Would it benefit us to register that logo, which is just an acronym of our company, alone or incorporate it with our company name? We use a stylized font for the logo and also use the same font for our company name on our website and clothing. We often include both together in advertisement and products. I assume, based on what you said, our name is protected regardless of the font so I was unsure the best way to submit the filing.

Thanks… Jim

Clifford D. Hyra 01.05.12 at 4:41 pm

James,

Feel free to contact me privately if you want a personal consultation. I think the post covers the general pluses and minuses of your different options. If you can afford it, the strongest protection is to register your name and logo separately. If your logo is very important and you do not think it will change in the near future, the most cost-effective way to get some protection for both your logo and name is to register them together (assuming your name is generally a part of or used in close proximity to your logo). The downside of doing that is less protection for your name (someone with a different logo could argue that it would not be confusingly similar due to the design differences) as well as needing a new registration if your logo changes.

Clifford D. Hyra 01.05.12 at 4:44 pm

Jim,

Yes, a standard character registration covers any type of font or stylization. If a business name is already registered and a business is looking at a second registration for a logo, I typically recommend separating the design element of the logo and registering that on its own, as that usually results in the strongest overall protection. Again, feel free to contact me directly if you would like me to look at your situation specifically.

kyle reynolds 01.21.12 at 4:16 am

please contact me I’m trying to trade mark my transportation name before some one els takes it and then i have think of another one also what do i need to do to make my company a legal and legit company so i don’t run in to any legal issues.

thank you

Clifford D. Hyra 01.23.12 at 5:07 pm

When picking a name for a new business, it is a good idea to conduct a trademark search to ensure that your name will not infringe on the trademark rights of another company. It also may make sense to register your business name as a copyright, to prevent other companies from using a similar name and creating confusion. You can contact me directly if you have any questions.

Now of course, there are other legal steps that need to be taken when opening a business, but I am an IP attorney and do not handle or claim to be an expert in other business law matters, such as business associations.

Simone 02.02.12 at 12:36 am

Hi there! This is such a great post. I am new to this..I run an online business for three years now and just getting around to protecting my name and logo, both of which are very unique. Would I file a SERVICE mark or a trademark? I have limited funds and you mentioned it could be costly, but I dont see any other way. Thanks!

Clifford D. Hyra 02.02.12 at 1:58 am

Simone,

A service mark is just a trademark that is used in connection with the offering of services (as opposed to products). No distinction is made at the Trademark Office between the two, so you do not have to pick one or the other.

barbara 02.06.12 at 2:15 am

As a publicist / graphic designer freelance in process of incorporate my business my big concern is that someone steal my name company and logo. But also, I am really aware that from time to time a logo design can change or twist a little bit. Can I trademark the name of the company as standard font and the logo design in black ( in my case is a combination of two letters) ? I really don’t want to waste $…

Thanks anticipated.

Clifford D. Hyra 02.06.12 at 3:37 am

Barbara,

It is possible to file two separate trademark applications, one for the name and one for the logo. It is also possible to apply for the logo in black and white (which allows use of any color). But, if an application is filed for the logo and words together, there is no way to make a standard character claim for the words. Feel free to contact me directly to discuss this further.

RJ 02.18.12 at 6:10 pm

I have a business name that is incorporated with the State. I want to protect my company name, my logo, and my tagline on my logo. Start-up company, I need the most cost effective way. Do I have to put an application in for each element – company name, logo (name incorporated into logo, and tagline (which is also used in part of the logo and by itself). Is it better to go through Legalzoom, Knowem, etc. to file these applications. Based on what I have read it seems I have to file an application for all three – that is extremely expensive.

Clifford D. Hyra 02.19.12 at 2:32 am

RJ,

If you need some protection for a business name, logo, and slogan which are used together, the most cost-effective way is to file a single application for the combination. However, there is a trade-off in that the protection for each individual element will not be as strong as if the elements were registered individually, and the registration will not be as flexible in case some part of the mark changes (e.g. slogan or logo).

I would not recommend LegalZoom or the like, I have run across many people who had bad experiences with them. Find a reputable trademark attorney with reasonable prices.

m. david 02.22.12 at 6:55 pm

hi, if possibly and you wish to reply, can you do so privately? Only if possible. I was wondering if I can trademark the name “I AM”
I want it capitalized with space between “I” and the “AM”
That is all.
Perhaps you can assist in this matter? Many Thanks!

m. david 02.22.12 at 6:57 pm

my email is [Mod edit]
Many Thanks

RE: can I AM be trademarked? and if yes, to do so. Thanks

Clifford D. Hyra 02.22.12 at 9:00 pm

David, I have contacted you privately as requested.

Dina 03.07.12 at 9:15 pm

If your company name is based on the names of the founding partners, neither of which are particularly common names, how important is it to trademark that name? Thanks for any input.

Jack 03.09.12 at 10:22 pm

Hi,

I am looking to create a trademark for my company. The name of the company is 4 words but will almost always be displayed as its acronym. If the design (as the acronym) is displayed but the full company name is displayed on the tag, which should I trademark, the acronym or the full name? Also, if I trademark the logo (acronym) and register the business as its full name, does that strengthen or weaken my claim to the name? For example if the company is Al’s Big Cooking Depot but will generally be displayed as ABCD, can another company trademark Al’s Big Cooking Depot, even though its in use as my DBA and displayed on my tags, since only my acronym is trademarked? Thanks for the great article!

Clifford D. Hyra 03.13.12 at 2:30 pm

If no one is going to use a confusingly similar name then there is not much reason to trademark your name, since trademark registration helps you to prevent others from using confusingly similar trademarks. On the other hand, the cost of registration is modest and over time the rights to your name will become very secure if you have a registration, plus you can use the registration symbol if desired.

Clifford D. Hyra 03.13.12 at 2:35 pm

Jack,

The company name that is registered makes no difference to trademark rights. In fact, registering your trademark as your company’s name could be considered some evidence that you are using it merely as a trade name and not as a trademark.

The safest thing is to register every trademark that you will be using. If you do not register one of your trademarks, it will still have common law rights based on your use in commerce. However, if you are not monitoring the situation someone could easily come in and register a confusingly similar trademark and after a certain period of time you would be unable to dislodge them.

If you registered ABCD as a trademark, the Trademark Office would not find Al’s Big Cooking Depot to be confusing similar to that mark, and would most likely grant a trademark registration for it. Your dba does not matter in that analysis.

This is a complex issue and I would advise you to consult with an attorney.

Rochele Clifford 03.16.12 at 6:29 pm

Bonjour! I am interested in getting my business name trademarked. Will you please email me your rates for this service? I am located in WA State. Merci! Rochele

S. H. 03.19.12 at 6:36 am

I have had my very unique photography/art company name registered with the state as DBA for about 5 years and built it up over this time. About two years ago I had my site registered under a “.com”. A cyber squatter snatched it up and has used it for nothing so I now have a “.org” site. I want my domain site back, but I do not want to have to go through a costly legal process, as I am a very small business owner. The squatters are located in California. Should I register my site as a service mark? I have no consistent logo yet. What would you recommend?

Also, for any artist using a unique business name, do you recommend that we do some sort of trademark or service mark? A copyright doesn’t seem to be enough when it comes to our online names.

Thank you in advance for your time!

Clifford D. Hyra 03.19.12 at 2:08 pm

Susanna,

Other than a costly legal process, your only real option is to write them a letter and hope they see the light. The UDRP domain name dispute process is much less expensive than litigation, but it is still at least a few thousand dollars. Having a trademark registration for your name does make it much easier to start the UDRP process or write a convincing letter. The fact that the domain was registered before your name is not helpful, and usually it is not possible to successfully transfer a domain using the UDRP when the domain was registered before you can prove you had trademark rights.

Copyright does not even apply to names. If you want exclusive rights to a name, you should register it as a federal trademark.

If you want me to address your particular fact situation and give you legal advice, you would have to retain me as your attorney.

Jerod 03.24.12 at 2:32 am

I was just going through the trademark process and have had no problems with my logo so far is it is quite unique. However, my unique name is not so unique and has been trademarked. I have proof that I used it in commerce before it was registered, but I honestly have no problem with the existence of this other company. They are a small company and don’t see them expanding into the national market. Although they are in the same market (apparel), I don’t consider them competition. What should be my next step?

Clifford D. Hyra 03.24.12 at 3:45 am

Jerod,

Based on the information you provided, if you want to register your name you will have to cancel the registration of this other company. If they are a small company, they might not have the resources to fight it and you may be able to resolve the matter inexpensively. You can allow them to continue using the name if you wish. Please contact me for more information.

Alex 04.10.12 at 6:26 am

I was wondering for my website can I take a screen shot of the front page and send it in as a specimen. I also have a logo and a business name that I would like to use but the they will both be used together or seperately. More then likely however the logo will be either used by itself or with the business name but I want to protect the business name and logo. Should I do three separate trademarks, trademarking the business name as a standard character claim, the logo, and the combination……can I do that?

Clifford D. Hyra 04.10.12 at 2:41 pm

I frequently use screenshots of websites for specimens. However, whether that is an appropriate specimen or not depends on w hat the listed goods/services are and what is on the website.

I would not register the combination. If you have the name and the logo separately, that will cover you even if you use them together sometimes. Let me know if I can help.

Maisha 04.12.12 at 3:05 pm

Hi Clifford:

Create article with awesome info, I am looking at trademarking and copyrighting my business name and woud like to speak to you about options.

Please contact me at [Moderator removed]

Thanks

Hugo G. 04.14.12 at 3:31 am

Hello:
First I’d like to thank you for the amount of work it took to make this valuable website/information available to us.

Dilemma: In 2005 we bought an Ice Cream shop that’s been in operation with the same name since the mid 90’s but I can prove it’s been the same name since 2003. We definitely wanted the name so our lawyer saw to it that the previous owners dissolved the name with the STATE and we immediately assumed the name.
1. We formed two corps. One for building/land, one for business.
2. Once name of business was clear, we amended our corp. papers with name of ice cream shop as Corp doing business as ([Mod edit]).

Unbeknownst to us, in 2007, a company trademarked the name, [Mod edit] for a product they sell. We received a letter stating that we were using a name they trademarked but it was ok to continue using. Now in 2012, we just received a letter stating that we cannot use the name and that they tried to get us to stop using it in 2010, which is not what the letter stated.
We thought we were protected enough for a small ma and pa establishment with the State papers that were filed when we bought it in 2005. We paid and relied on incompetent council to inform us.

1. Do we have any recourse given the time we were established compared to the new corporation?
2. The names are slightly different. We are [Mod edit], name of our shop, they are [Mod edit], a product.
3. So far I can prove our name was in existence for at least 5 years before they filed and received TM status.
4. Their corp. name is [Mod edit], [Mod edit] is just a product in which they sell.

Sorry for the length and any light you may be able to shed would be greatly appreciated.

Thank you,
hg

Nigel Poole 04.14.12 at 4:56 pm

YES!!! I would love your assistants. My email is……I think you have it lol if not let me know and I will post it. I have a business name that might be considered descriptive under trademark law although it is misspelled to my understanding a descriptive misspelled trademark that represents the companies good/services will be treated like its properly spelled counterpart. I want to trademark my name but……since its nonrefundable it it doesn’t get approved lol……i just got to make sure.

Nigel Poole 04.14.12 at 4:58 pm

and I posted earlier under the name Alex that’s my middle name

Clifford D. Hyra 04.15.12 at 1:25 am

Hugo,

The first business to use the mark or apply to register it (whichever is first) has priority. The other business cannot make the first business stop its use, although it may be able to prevent that first business from expanding. I have responded to you by email.

Clifford D. Hyra 04.15.12 at 1:26 am

Nigel,

I will respond to you privately.

AKOA 05.11.12 at 6:28 am

Goodday! I run a website for a year plus with a name which I want to register as a business name, but was told it cannot be registered. Though clients have known us with that name. I want to know if I would be able to register new business name and still operate as the name used for the website.

Thank You.
AKOA

Clifford D. Hyra 05.16.12 at 4:53 pm

AKOA,

That is really a business law issue. A trademark does not need to match the legal name of any corporate entity, but generally states require that you register a name as a dba if you want to do business under that name and it is not the legal name of your entity.

Marcella Gomez 05.19.12 at 11:18 pm

Hello,
I am in the process of starting up a business plan for a new business I will open up in a year or so. (an educational Learning Center) I have the name of the business and I would not want anyone to use the name. Should I trademark it even though my business has not opened up yet?
Thank You,
Marcella

Jesse Gomez 05.27.12 at 6:57 pm

Hi,

Wanted some advice.

I’m in the plans of starting up a business. Should I trademark the name or logo if the business has not opened up yet?

Clifford D. Hyra 05.29.12 at 6:21 pm

Marcella,

Yes. There is some added expense to filing before you begin using the trademark, however in my opinion the additional cost is worth it considering the long one year period during which someone else could start using the name. I often recommend my clients wait until after use begins when it is only a matter of a few weeks, but a year is another matter.

Marcella/Jesse Gomez 05.30.12 at 12:22 am

Thank you Mr. Hyra for your expert advice.
I was also told that I should register my business as an LLC instead of trademarking it in order to protect name/and other legal issues if it should arise in the future. My concern is this- in in the process of developing business plan and foreseeing this business opening in a year or so, can I still register business as LLC now. I would really like to protect the name and of course the investment.

Clifford D. Hyra 05.30.12 at 1:34 am

There is no problem with registering your LLC now before you begin operating. However, registering your business as an LLC does very little, particularly if you are not running the business yet. Registering the business name as an LLC will only stop someone from registering the exact same name in your state. A registered trademark will protect against anyone else using a confusingly similar business name anywhere in the country.

Verona 05.30.12 at 11:01 pm

Hi I’m in a dilemma myself. After weeks and weeks I have finally come up with a business name that I thought would be unique. When I searched with the county’s clerk office I found that the name has already been registered however it has not been trademarked. The business I have is not the same. Can I still use the business name but add the service to it and have it registered with the county and trademarked? I don’t want to get myself in any legal issues. Thank you!

Clifford D. Hyra 05.31.12 at 1:10 am

Verona,

That is a fact-specific question that depends on the name and on the two businesses. Probably you can register it with the county if you make a small change, but that does not help you with any trademark issues at all.

bak 05.31.12 at 5:58 pm

I want to trademark a slogan to use on tee shirts and apparel. (for example, “i am the truth”) If I use the slogan as my company name; is there a need to file for a trademark to prevent use of the slogan? I’m basically trying to figure out the simplest way to protect the use of the slogan. (Either trademark, or register as a company name). Any help would be appreciated. Thank you.

bak 05.31.12 at 6:15 pm

Hello. I have a question regarding a previous post. Below is the post I’m referring to. And followed is my specific question…

Jerod 03.24.12 at 2:32 am
I was just going through the trademark process and have had no problems with my logo so far is it is quite unique. However, my unique name is not so unique and has been trademarked. I have proof that I used it in commerce before it was registered, but I honestly have no problem with the existence of this other company. They are a small company and don’t see them expanding into the national market. Although they are in the same market (apparel), I don’t consider them competition. What should be my next step?

Clifford D. Hyra 03.24.12 at 3:45 am
Jerod,

Based on the information you provided, if you want to register your name you will have to cancel the registration of this other company. If they are a small company, they might not have the resources to fight it and you may be able to resolve the matter inexpensively. You can allow them to continue using the name if you wish. Please contact me for more information.
—————————————————————————————-

My question is; What is the point of a trademark, if (such as in the above situation) another person is already using the logo? I want to trademark a slogan, but will it be pointless if someone else has been using the slogan, but never trademarked it themselves? I’m thinking, that I should just use my slogan in commerce, and save myself the fees for trademarking, and if someone trademarks it later, I can show that I’ve been using the name in commerce before the trademark was registered. Does this make sense?

Clifford D. Hyra 06.02.12 at 9:09 am

Bak,

I get where you are coming from, but no it does not make sense. First of all, you would have to monitor the trademark office database to quickly detect when someone is registering a confusingly similar name. Once a registration is in force for 5 years, you lose the ability to cancel it on the basis of prior use and also lose the right to expand your business to new geographic areas. Second, showing that you have been using the name in commerce before the other trademark was used is difficult and costly. An opposition or cancellation proceeding can run $100,000. There is no guarantee that you will be able to prove your use in commerce to the satisfaction of the Board. Even if you win, the case can be appealed to Federal Court where you can enjoy costs of closer to $500,000. You also would have to prove that your mark is confusingly similar to the registered trademark of this other person, which you also might be unable to do to the satisfaction of the Board/Court.

Registering your trademark has many benefits and, after five years, becomes incontestable and cannot be challenged by the prior user on the basis of likelihood of confusion.

Clifford D. Hyra 06.02.12 at 9:10 am

Bak,

Registering something as a company name is completely useless. Whatever you do, do not rely on that. Trademark is the only way to protect a slogan, but it needs to be more than a decorative feature on clothing- it needs to be on tags and/or labels for the clothing.

bak 06.02.12 at 5:41 pm

In regards to your previous response:

Clifford D. Hyra 06.02.12 at 9:10 am
Bak,

Registering something as a company name is completely useless. Whatever you do, do not rely on that. Trademark is the only way to protect a slogan, but it needs to be more than a decorative feature on clothing- it needs to be on tags and/or labels for the clothing.
—————————————————————————————-

I’m confused by this. Are you saying that I cannot have my clothing line called “bak’s clothing line” (labeled on the shirt), and then just use the trademarked slogan (such as “i am the truth”) printed on the shirt, and expect legal protection?

Clifford D. Hyra 06.02.12 at 8:35 pm

Bak,

That is correct. You cannot even get a trademark registration for a slogan that is only used on the front of a shirt. Such a slogan would be considered mere ornamentation and would be refused registration. The point of trademarks is to protect source identifiers, not ornamental designs or witty phrases used to decorate clothing. Such decorative features are generally not considered to be source-identifying (connected with the company making the shirts). There are exceptions, but that is the general principle.

bak 06.03.12 at 5:42 pm

Wowsers! Thank you so much for the information. Your site is amazing, and you are doing wonderful work.

I just have one more follow up question (I promise =)). What about the trademark “I heart NY”? The famous slogan used on NY t-shirts etc. There’s no identifying brand of that nature. It’s just a trademarked slogan used by the city/state?

Clifford D. Hyra 06.04.12 at 1:49 pm

Bak,

If you check the file history for the I (heart) NY trademark registration, you can see that the application was initially refused on the basis that the mark was merely ornamental. The state then submitted copious evidence of acquired distinctiveness and also argued that the mark was recognized as a source identifier due to its use for other services besides shirts. That allowed them to overcome the refusal.

Sarita Li Johnson 06.07.12 at 4:50 am

Hello!

Thanks for this article. It’s very enlightening, as are the comments and your replies to them.

I still have a question though– I have a sole proprietorship with a fictitious business name/dba. What I’m wondering is whether or not a trademark registration is what I need in order to use references to that name in different lines of items I make.

For example: pretend my business name is “The Airborne Mama” (it isn’t). I want to make handmade books and label them “Airborne Books.” Maybe a line of home decor items and label them “Airborne at Home.” Is this something I’d seek a trademark registration for, or should I consult with a business expert about separate DBAs?

Clifford D. Hyra 06.07.12 at 1:34 pm

A dba is basically a business name, so the only reason to have multiple dba is if you want it to seem like those different products are being offered by different companies. If you want to use a single business name but have separate product lines, that implicates trademark law rather than any corporate law. You could just get one trademark registration for your house mark, here “Airborne,” for all the various products you plan to sell. Adding “books” or “at home” or other descriptive matter to the mark is fine and would not require separate trademark registrations.

Kalisi 06.07.12 at 9:16 pm

Hi Clifford,

Just perused through your extremely helpful article and the questions and answers followed soon after. I learned quite a bit and I just wanted to confirm that what you’re saying is basically – legal registration trumps any simple trademarks and comes in full effect after 5 years of use.

Is that correct? I, like many others I see, am a small business owner, and I am trying to weigh the pros and cons of whether or not I should consider registering. I am trying not to just because of the costs associated with it.

I am also in the middle of a dispute with another company who uses a similar product name as ours. We have proof that we’ve used the name before and have yet to hear back from them. BUT it’s still disconcerting to imagine the legal horrors that might occur. From research, it seems like there is no law that prohibits either company from using the same or similar trademarked names (unless it’s clearly registered of course). It only becomes a serious when one company decides to sue the other, right?

Thanks for taking the time to read and answer my questions! Appreciate it.

Best regards,
K.

B.A. Sherel 06.09.12 at 3:42 pm

Hello I have a few questions about trademarking.
1. Should I trademark the name and logo separately ?
2. If I cannot afford to do both which one should I do first?
3. My business has not quite settled on a logo but it is imperative we start promoting soon. Do you suggest trademarking the name for now, then trademarking the logo later? If I do this do I need to reatrademark the name again with addition of the logo? Or do I just do the logo separately?

Jackie 06.11.12 at 5:00 pm

Hi Clifford,

I started my company several years ago and originally did a trademark on it (through USPTO). Another company in the area just popped up and is using the same symbol as I do in my company logo. Since I used my logo, company name, and this particular symbol (it’s a type of flower) in commerce well before they had, do I have a leg to stand on by asking them to refrain from using it? They look slightly different but I would hope that I would have priority since I first used it in commerce and even had a trademark before. I don’t want to get too detailed on this forum but please use my email if you need more info. I truly appreciate your help!

buck daly 06.15.12 at 12:39 am

Hello. Thank you for taking the time to answer questions… I’m interested in starting a clothing line. I’ve applied for a trademark, for a phrase I want to use. As I understand it, I must also use the trademarked phrase as my brand name as well, in order to have the trademark approved (correct me if i’m wrong). My question is this: Can I use an alternate DBA, for the label of a different name and trademark. Example: DBA “abc company”. Label “x factor”. Trademark “x factor” ? So, a separate name for the DBA, and a separate name for the Label/Trademark.

David Lambert 06.18.12 at 3:26 am

What are your costs associated with registering a Business Name (Fed’l) and a Logo Name (Fed’l) …..Thanks

Kayla 06.18.12 at 7:17 pm

Hello,
For starters thank you so much for taking your time to help small business owners, like myself, find the right direction in figuring out the proper steps for trademarking our business for the best protection according to our needs!

I have a salon I opened as an LLC in 2010. I have recently decided to change the name so the name will efficiently describe who we are and what we are about. I figure this will not only help to define our culture but also be far more effective for branding purposes. Obviously I have all of my licenses under the LLC, banking information, taxes etc. so I have a couple of questions:

1) Do I need to/should I file for a new fictitious name with the state before I am able to trademark the new name?
2) How long does the trademark process take? I have already searched and there is no other salon nationwide with the same name of even similar.
3) Am I able to, once I have trademarked the new name, continue running under my current LLC by setting up a DBA using the new trademarked name?
4) The new name is 5 letters creating one word, which is also an acronym for our slogan, describing who we are etc. Now the slogan will not be ‘part of the name’, if you will, just used in conjunction for marketing & branding purposes. For example, our sign will just have the name, but the website, business cards, informational brochures handed out etc. would have the name and also the slogan. So do I also need to separately trademark the slogan, or since it is an acronym no?

I have decided I am going to Federally Trademark the name because I do plan on creating a product line eventually in the future.

Thank you so much for your time, and I look forward to hearing from you soon. Take care.

Kayla 06.18.12 at 7:18 pm

O and do I need to copyright anything?

bak 06.27.12 at 10:08 pm

Can you explain the difference between trademarking a slogan for use on clothing and trademarking a catch phrase? I’ve just heard that an nba player trademarked a catch phrase. Can he trademark a catch phrase, and then print them on shirts?

Clifford D. Hyra 06.30.12 at 9:57 pm

Kalisi,

Once a trademark has been registered for five years and an affidavit of incontestability has been filed, it is no longer possible to cancel that registration on the basis of priority (that you were using a confusingly similar trademark first). However, if you were using your trademark before another, confusingly similar trademark was used or registered, you can continue using your trademark indefinitely on the same products/services and in the same areas you were using them at the time the other trademark was registered.

Trademark law is a civil matter (except for counterfeiting law). So as long as the other party is not a counterfeiter, the police/FBI are not going to do anything to help you, you have to enforce your own trademark rights. The cost of trademark registration is very small compared to the cost of a trademark conflict. It surprises me that you would hesitate to register after you have already been involved in a conflict!

Clifford D. Hyra 06.30.12 at 9:58 pm

B.A., I recommend you read the article you are commenting on! It addresses exactly the questions you are asking.

Clifford D. Hyra 06.30.12 at 9:59 pm

Jackie,

Prior use generally prevails, if they are in the same area and in the same line of business. You need to speak with an attorney to address the facts of your specific situation.

Clifford D. Hyra 06.30.12 at 10:00 pm

Buck,

Your dba can be whatever you want, it does not have to be related to your label, brand or trademark.

Clifford D. Hyra 06.30.12 at 10:01 pm

David,

Please contact me directly.

Clifford D. Hyra 06.30.12 at 10:02 pm

Bak,

Trademark rights only exist in relation to specific products or services. There is no way to protect a catch phrase for any goods or services- only for specific goods or services that you will use the catch phrase on as a source identifier (brand).

Clifford D. Hyra 07.01.12 at 5:05 am

Kayla,

Trademark law and your state’s entity naming rules have nothing to do with one another. The Trademark Office does not care if you have registered your trademark in some way with a state or not.

The trademark process takes 7-8 months if there are no issues. Your search is most likely incomplete, but it is a good sign that you did not find anything similar.

An LLC may operate under another name if that name is registered as a dba with the state. This has nothing to do with trademark law.

If you want to protect the slogan, you will have to register it separately.

Sara 07.07.12 at 6:11 pm

Dear Mr. Hyra,

How do you feel about the website Trademarkia [edited out link] to register a business name? I run an online literary magazine, which is continuing to grow, and would like to trademark its name.

Thank you in advance.

Sara

Shannen 07.16.12 at 11:20 pm

Hello, I’m so glad I found this site! If you could please provide me with some insight on my issue I would be MOST GRATEFUL! How can I contact you privately? It’s regarding a trademark issue.

Thank you so much!

Denise 07.17.12 at 11:07 pm

We recently filed a fictitious business name, which differs slightly from our registered name. Do we need to clone our logo, which currently contains our registered name, to now include our fictitious business name?

M.O. 07.24.12 at 2:26 am

I started a business with a partner 8 years ago. We tried to secure a trademark and was denied. Well we split up and it was decided that we both could continue to use same business name but in different locations.
About a couple months ago they (old partner) secured a trademark and now they want me to stop using name. If the business that I’m at was the first location am I covered?

Clifford D. Hyra 07.24.12 at 6:52 pm

Sara,

I don’t really have experience with Trademarkia, but they are a trademark mill- a very high volume, website-driven trademark application company that I understand provides little personal attention. I generally do not recommend trademark mills, when you can get competitive fees from attorneys who will work with you directly and answer all your questions about the process.

Clifford D. Hyra 07.24.12 at 6:55 pm

Shannen,

I emailed you.

Clifford D. Hyra 07.24.12 at 6:56 pm

Denise,

If you are going to use your fictitious name now and not your registered name, wouldn’t you want your logo to have that fictitious name? I think this is a matter of branding, not trademark law per se.

Clifford D. Hyra 07.24.12 at 6:58 pm

M.O.,

Generally, someone using a trademark before it was registered by another party is entitled to continue using it in the same geographic area after the registration. But, the ability to expand may be restricted. Your situation may vary at least in that you had some agreement with your former business partner. Sounds like it would be a good idea to consult an attorney.

ray hamption 07.30.12 at 12:44 am

Hi I’m trying to build a record company from the ground up. I’m seeking some information that could help me succeed.my rap name (AKA). alias is going to be the trademark . should the record company be registered under the standard character claim. or my alias is?

Jay 08.01.12 at 11:41 pm

Clifford,

Thank you so much for the great article! Have a couple of questions:

1. I have formed a company JA Wines USA and would like to trademark the name for the wine industry. I fear that if I trademark “JA Wines USA”, someone else could register “JA Wines”. In this case, would I need to trademark both? (seems too costly?)

2. On my wine labels, I have a “Kangaroo Wine” brand with bold blue, x font style, no symbol or picture. Would I be better off registering the name or the logo?

Thank you in advance.

Jay

Clifford D. Hyra 08.02.12 at 3:25 pm

Ray,

I do not understand your question. Are you asking whether to register your rap name or your record company name? That depends on what you want to have exclusive nationwide rights to. Maybe you need both. Consult an attorney.

Clifford D. Hyra 08.02.12 at 3:29 pm

Jay,

A trademark registration protects against confusingly similar marks, not just identical marks. Based on the limited information available to me, it does appear that JA Wines would be confusingly similar to JA Wines USA. That said, you might want to consult a trademark attorney regarding what to register.

I can’t give you specific legal advice like you are asking for with respect to your particular name/logo. Providing that kind of advice is a service I provide to my clients. A lot of good, general information is provided in the post you are commenting on.

PC 08.06.12 at 4:52 pm

Hi,

I am creating a video game which will hopefully turn into a series of games. I have already set up an LLC as well as my trademark.

1). Will I need a different trademark for every game I create in the future?

2) can I change my trademark name? How do I go about doing so?

3) can I use my trademark as my logo or must I register my logo separately?

Thank you.
PC

Robin Tanner 08.15.12 at 1:20 pm

Hello,
I may be interested in trademarking my small business name, however, I don’t currently have a logo associated with my name; is it important that I register the name with a logo? A small online business has opened in another state and while she produces a different line of baby items, they’re still baby items and I have been operating long before she started..at any rate, it’s something I know I need to do at some stage~Would you mind sending your rates for guiding and securing a trademark for my business? Thanks in advance!

Clifford D. Hyra 08.16.12 at 3:32 pm

PC,

If your games are popular or important enough to warrant trademark registration, then yes you would want a separate trademark registration for the name of each game.

You can always change your name, but if you wanted federal trademark protection for your new name, you would have to file a new trademark application for the new name.

I don’t know what you are asking about regarding your trademark/logo. A logo is one example of a typical trademark.

Clifford D. Hyra 08.16.12 at 3:33 pm

Robin,

You do not need a logo to secure the protection of a federal trademark registration. I contacted you privately with more details.

Jessica 08.18.12 at 10:52 pm

Hello,
I own a handmade soap company and while I want to register my company and logo, do I also need to register specific lines (ie, my mens line which has my main company name plus a sub-name on the packaging) and then also register each individual scent name- which is over 45 or are those protected under the main company? Does cheerieos have to trademark honey nut kind of thing. Sorry so long winded, thanks in advance!

Clifford D. Hyra 08.21.12 at 5:32 pm

Jessica,

You can register specific lines, but there is no requirement that you do so. General Mills does have registrations for HONEY NUT CHEERIOS, etc., but General Mills is a huge company with probably billions of dollars in sales, so they are going to protect every trademark. It’s a cost-benefit issue. There is not just the cost of registering the marks to consider, but also the costs of monitoring and enforcing all those marks. If you want to contact me directly, I would be happy to give you some specific advice regarding your business.

jerrymadd 08.27.12 at 3:00 am

Hi

I was wondering. Would it be better to file for a trademark under your LLC or your personal name?

Thanks

jerrymadd

Matthew 08.27.12 at 4:06 am

Hi,
I’m in the process of opening a film production company. I have a company name in mind and a logo aswell. Based on your column, it seems like you think it’d be best to trademark each separately? If I trademark the logo with the company name in it, will that provide protection for both the logo and the company itself? If so, would legalzoom be the best way to do this? Also, if I eventually want to make the company an LLC, does anything in this process change?
Thanks for your help,
Matthew

Clifford D. Hyra 08.27.12 at 4:47 pm

Jerry,

That depends. Registering it under your LLC ties it to that entity and may make it vulnerable in the event of bankruptcy or dissolution. Registering it in your personal name means that you will have to remember to assign it if you ever are no longer in full control of the business entity. Also, the owner’s name shows up in the trademark office database, and using your personal name will give the appearance that you are a very small entity.

Clifford D. Hyra 08.27.12 at 4:50 pm

Matthew,

Registering them separately gives you stronger protection. But as discussed in the post, registering the logo with the name in it does give some protection for each element. Some of my clients have had bad experiences with LegalZoom. I would recommend a personal attorney with reasonable fees. If you register before you form the LLC, you may want to file an assignment to your corporate entity.

JohnA 08.27.12 at 5:56 pm

Hello, Clifford,

A few questions. I have a website, let’s call it, myexamplesite.com. It has a tag-line, Making an Example!

I would like to protect various aspects of this site. I am wondering how I would go about doing it.

First, I would like to Trademark “My Example Site.” The question I have is, should I TM “My Example Site” separately from “myexamplesite,” or would TMing “My Example Site” automatically cover “myexamplesite?” Also, if I just go with the plain text version of “My Example Site,” would I be able to TM stylistic variations of My Example Site in the future without the first TM being cited against me as prior art?

Second, if I TM my “MY Example Site” version now, can I TM my logo later? or is there something that would prevent me from doing so later? I saw one of your responses earlier here where you said, once you TM the logo (with the name in it), there is really no way to TM the name on its own later. My Logo may or may not incorporate the My Example Site text in it. For instance, it could just be a “swoosh” or it could be a combination of the text and a graphic. I am still working on the final logo, but I don’t really want to wait for the logo to be complete, before I TM the text.

Third, I want to TM my tagline. The tagline is used in conjunction with the site name, but on many places on the site, it is used on its own. For example, it could be used in the Help section or FAQs. If I TM the tagline on its own, is it safe to say that I could get away with choosing the same “classes” as I would for the My Example Site name and/or logo?

Fourth, I am using an abbreviation for my site users. For example, how Facebook users are called FBers or Facebook is also known as FB, my site users are called by an abbreviated name, let’s say, mes’ers (MyExampleSite ers). Is there any reason I should Tm the abbreviation? I personally see no benefit to it, and feel like I will be obsessively protecting everything about the site at that point, but I would like to know an expert’s view on whether there would be a benefit in TMing an abbreviation like that.

Finally, I purchased the domain now and have a temporary page with my website name up. I don’t have a real/production version of the site up yet, but I would like to file the TM application now. I feel like I am already using this in commerce since it is up on the internet and the website is accessible to everyone, but at the same time, there is nothing on the site, so it is not really “in use.” Should I be filing under the “intent to use” or “already using in commerce” category.

I understand many of these questions seem really in-depth. Please answer them to the best of your ability keeping in mind your schedule.

Best,
John

Clifford D. Hyra 08.27.12 at 6:12 pm

John,

You should register your mark as you use it in commerce. Typically, registering a business name will protect the corresponding domain name. Your own registrations will not be cited against you if your applications are prepared properly. There is nothing preventing you from registering a name now and logo later or vice versa. The tagline should be registered in connections with the goods or services it is used with. You should protect the abbreviation if you will do business under the abbreviation and want to stop others from doing the same. You may consider the experience of Twitter with the term Tweet. Having a domain name is not use in commerce.

Since you have many questions, using an experienced trademark attorney for your registrations is probably well worth the modest cost.

DanC 08.29.12 at 7:55 pm

Starting my own home business and wondering if it’s worth the trouble/expense to trademark the name? Also, thoughts on this being a LLC – if you have any? Thanks.
-Dan

Clifford D. Hyra 08.30.12 at 2:35 pm

Dan,

That really depends on what the home business is and where you see it going in the future! Why don’t you contact me or another trademark attorney for a free initial discussion.

Regarding the LLC, I am not a business attorney but LLCs are usually very inexpensive to set up, lend you more of a professional image, and can provide some legal protection for your personal assets.

J days 09.14.12 at 11:50 pm

Hi. I just applied for LLC under a name different than my Trademark and different than the name reflected on my business license application (which is the same as my trademark). Should I have kept all of these the same; one name for LLC, Trademark, and Business license or does OT really matter? I understand I will have to file a DBA.

I think by using two different names I may have made things a little more confusing than needed. I applied for LLC today. Is it too late to change the name for LLC

Clifford D. Hyra 09.17.12 at 3:28 am

Jodi,

I am not a business attorney and may not be barred in your state, so I cannot speak to those issues. I would imagine your entity name should be what is on your business license and that you could always register another LLC. As far as trademarks go, that is a branding issue. Your brand/trademark do not have to be the same as your entity name and it is very common for the two to be different.

lesley 09.18.12 at 5:38 pm

Hi Clifford,

I want trademark my brand label as a standard character registration so there is more scope for protection, seems pretty straight forward… but what I am unsure about though is, if I register say my name Lesley Good Collections, will my name just as Lesley Good be protected? (Especially if sometimes I only want to use Lesley Good?). Also, vice versa if I register just Lesley Good, when I use Lesley Good Collections will that still be covered under trademark? Do I just register Lesley Good and then just add on Collections when I want to use it or register the whole line?

Thank you in advance!
Kind regards
Les

lesley 09.18.12 at 5:47 pm

Another question also:

Is it possible to add additional classes to an existing trademark in the future?

Is it possible to add protection in other countries in the future under the same trademark?

Thank you
Kind regards
Les

Clifford D. Hyra 09.20.12 at 2:51 am

In your hypothetical, Lesley Good would probably be considered confusingly similar to Lesley Good Collections and vice versa, so to that extent you would be protected against another person using that mark. In general, it is recommended to leave out descriptive wording in trademark applications, especially if that descriptive wording will not always be used. Of course it all depends on the situation, and it is often well worth the small cost to consult a trademark attorney when preparing your application.

Clifford D. Hyra 09.20.12 at 2:52 am

It is possible to register additional classes later, using additional applications. It is not guaranteed that they will be allowed, just because an earlier application was allowed for the same mark in another class. It is always possible to obtain protection in other countries, assuming no conflicts, etc., but you must file within 6 months to claim the benefit of priority (your U.S. filing date).

lesley 09.20.12 at 9:58 am

Great, thank you very much Clifford!

JoAnna 09.23.12 at 6:52 am

I’ve recently obtained my DBA and I was contacted by someone that has the name of my business on one of their designs on a T-shirt. They are accusing me of ‘stealing’ the name from one of their shirts. I’ve never even heard of this company. My question is, who would have the rights to this name? They’ve simply made a shirt with the same name I’m doing business as. Just like they’ve made other shirts with common quotes/names. They said they would trademark it and I need to know what I can do to protect my business name. Let me also add, I make hair clips and accessories, they make t-shirts. Thank you!

Jacklyne Tesoro 09.25.12 at 12:06 am

Hello Clifford,

I just received notice that my business name has been registered with the state of California today. I am planning on starting an online pet supply company. I am a sole proprietor also. I have bought my domain name already as well.

My question is, Do you think it is a good idea to get my business name trademarked before I start doing any business? From what I understand the legal actions that go on with copycatting and such can be horrible.

Please contact me an let me know what your fees are for filling a trademark.

Vantes S 09.27.12 at 12:59 pm

Hello Clifford, thank you for the information on this website. Please contact me. I am in need of an IP lawyer. Thank you. I look forward to your reply.

Clifford D. Hyra 09.27.12 at 3:25 pm

JoAnna,

Generally speaking, hair clips and accessories would not be considered confusingly similar to T-shirts, nor would putting a name on the front of a T-shirt be considered trademark use. There is a common misconception that being the “first” to think of a name makes you the owner of it, but that is not the case at all. However, a letter from a trademark attorney to that effect could save you some trouble. Please contact me directly if I can help.

Clifford D. Hyra 09.27.12 at 3:25 pm

Jacklyne,

It is a good idea, especially if you are going to be selling nationwide through an online site. I will contact you directly.

Clifford D. Hyra 09.27.12 at 3:26 pm

Vantes,

I have contacted you by email. Hope I can help

Brian F 09.27.12 at 5:13 pm

Dear Mr. Hyra,

First and foremost, I’d like to thank you for all the effort you extend in responding to people (such as myself), who are a little “lost” or “confused”. Reading through your “scenario” based posts has been a tremendous learning tool for me.

Hopefully, I haven’t missed a previous post containing the answer to my scenario/question. So, here goes;

I am starting a local directory type magazine which is geared toward visitors to a very specific destination or market. In trying to think ahead, If my (unique) formula for the publication is successful, I’d like to potentially expand into multiple markets, maybe even several states.

Locally, I’ve already registered the DBA under my LLC. My confusion comes with the name and logo.

(Please note that in my below example, I’ve intentionally chosen a relatively common type of publication name)

Pretending that my magazine is called something as simple as “This Month… In ABCville” . While the logo style (Font use, etc) would remain the identical from location to location, would it be possible to somehow register a name that actually changes slightly by geographic location, in accordance to its location, I.e. “This Month… In ABCburg” , “This Month… In XYZtown” etc. ? Or would my only option be to file a new DBA for each individual city market, in each state?

Lastly, and hypothetically, if possible to federally register as above; am I correct in understanding that if a pre-existing publication of the same or “nearly identical” name is already operating in one of my “future markets”, lets say using the DBA “This Month, in ABCburg”, but not federally registered… The existing publication would still have domain over the name in that market despite (my) newly approved federal registration?

Please accept my apologies for my lengthy “scenario” and questions.

Thank you again for the time and efforts you put forth!

Brian F

Clifford D. Hyra 10.03.12 at 5:16 pm

Brian,

You don’t need a DBA for each market. You might need a separate DBA filing for each state you are doing business in, but that is something you should discuss with a business attorney. Your DBA and your trademark are not related and do not have to be the same.

You can’t register a mark that changes- that is known as an “omnibus mark”. However, you might be able to register, in your hypothetical example, “This Month…” since that stays the same. You could also register each individual publication, but that might not be cost effective, and the name of the area is descriptive and not entitled to much if any protection in any case.

Pre-existing users are entitled to continue using their name even after you get a registration. After a certain period of time (generally 5 years) they would lose the ability to contest your registration.

Chaz 10.08.12 at 6:56 am

Hello!

Wow, what fantastic information in here. Im in need of some help as well. I own a Car Club. Not sure if I should TM it or Copyright it or anything. We have a huge following (2000+) and need to secure our name so no one tries to steal it or act as if they are “us”. Would appreciate the info, and need to be sent in the right direction to get this done asap.

Thanks you!

Brian F 10.09.12 at 5:31 am

Hi Clifford,

Everything you said makes perfect sense. I’ll look further registering a partial name as I get further along in getting this first publication and market opened.

Again, many thanks to you.

– Brian

Tiago Fortunato 10.09.12 at 3:04 pm

Good day.

I have started a personal project a few years ago and barely a year ago it has gone public. It is nothing more than a story producing group which I want to turn into a brand or company, which releases stories in a variety of formats (in other words, I want it to go serious from now on). The problem is, I am still gathering the money required to do a registry of the brand, and also of the contents it gives out (aka, the stories’ titles). I wanted to know if:
1 – Someone can (for the lack of better term) screw me over and get away with it by registering the brand themselves?
2 – The simple fact that I have found, hidden away, the same name “Tales of Immortality” used in other places, a minor site and a song title by a small time band?

PS: I have had a Facebook page running ever since the project went public, so perhaps this can grant me some sort of legal leverage.

Kareen 10.15.12 at 2:15 am

Hi,
I’m in process of trademarking my companies name with happens to be my last name. In my logo I have a”needle”. I want to make sure to register the name mostly and the needle but would like the freedom to use different fonts and move the needle position around. So would it be better to register just the name…or the entire logo with the needle?

Thanks,
Kareen

Clifford D. Hyra 10.15.12 at 2:42 am

Chaz,

Names can be protected by trademark, but not by copyrights. If you contact me directly, I can assist you with a trademark registration. Copyright protection would be for the text and graphics of your website and other materials, etc., but not for names, short phrases, and the like.

Clifford D. Hyra 10.15.12 at 2:46 am

Tiago,

Someone who has used a trademark in commerce prior to another person registering that trademark may be able to contest the registration on the basis of priority and likelihood of confusion, but that can be an expensive and lengthy process.

Generally, a likelihood of confusion will not exist if the same name is used for very different products or services. Many times, minor conflicts do not turn into legal problems.

Regarding your specific situation, it is complex and I can’t give detailed advice to someone who is not a client.

Clifford D. Hyra 10.15.12 at 2:49 am

To maintain a strong trademark, it is important to use a logo consistently. Varying the design elements will weaken the strength of a mark and make it less memorable.

If you have not settled on a final design, it is not a good idea to register the design knowing that it might change. Using a different logo than the one you registered can cause problems, although t here is some allowance for modernization of logos over time.

As I discuss in the article, often the name alone provides the strongest protection and is a good first step.

Megan Horne 10.31.12 at 11:42 pm

Hello,

Need some help – I am looking to register or company name and logo. We have been using it for over a year on our documents, mailing, banners, training material, etc. I understand that both the name and logo can be registered seperately, but our company name is My Nutrition Advisor and another company who has a trademark is registered as Nutrition Advisor. Will this be a problem? And when I file my logo, is it ONLY the symbol? Because our name is usually under it, but I’m assuming these are different entities.

Also, what is the best way to file – goods or services? We are a company who sales biocommunication devices to personal trainers. The devices are made by ZYTO Corp. The biocommunication device is used by personal trainers as a sales tool, to help clients purchase supplements. We also offer other products to use for the same purpose which are, metabolic scans, guided questionaire’s, and micronutrient testing. Everything but the questionairre’s are products from different companies. We have sale broker’s in different states who sell to personal trainers; and a call center. I suppose my question is – are we providing a service or is this classified as goods? Or combination of both? I don’t want to file incorrectly, and since we are still considered a small company, I’m on a budget.

Which leads me to another question – if I file my logo and my business name seperately to obtain a trademark and I am filing under goods AND services; do I have to file my logo twice AND my business name twice, for a total of 4 filing fees?

Clifford D. Hyra 11.01.12 at 4:15 am

Megan,

Having questions like these is the reason to retain a trademark attorney to assist you with the application process. It would be very difficult for me to try answer these questions publicly in a general way without addressing your specific circumstances. I will say that if you are selling products with the brands of other companies on them, then you are a retailer or distributor and providing a service. If you file two applications in two classes each, yes that would be four filing fees.

Chris 11.04.12 at 9:19 pm

Hello,

I am very worried. I registered an LLC and found out about a month later that there is another company in another state using the same name except spelled different. They are selling the same products. However, I will give you an example of the names. My LLC is called “webs2go”, their company is called “websites to go”.

My concern is am I running into an issue here? When I registered the company the state accepted and the domain name was available. Difference between them and me is that I am offering local delivery. Will I need to worry? I have not launched the company yet.

Thanks in advance.

Clifford D. Hyra 11.05.12 at 2:10 am

You really have not given me enough information to say, and even if you did, I could not give you specific advice over this website without an attorney-client relationship. But if two businesses have similar names and similar products, there is definitely the potential for a conflict. Registering a business name with your state is essentially meaningless in trademark law and provides no protection. The answer may depend on whether the other party’s business name is a registered trademark, what the geographic scopes of the businesses are, etc.

Chris 11.05.12 at 9:30 pm

Ok thanks. How do I retain you?

The other business is a large business. However, while searching the name on uspto.gov I noticed the business was in the process iPod trademarking but has a dead status and abandoned. I did notice that the person trying to register the trademark is not the owner of the company and was from another state with a different logo.

The geographic scope for their business is nationally just like mine. I’m not sure if to amend my business name to a dba.

Thanks!!

Clifford D. Hyra 11.06.12 at 6:00 am

Chris,

Please contact me directly at my email address chyra AT symbus.com. Whether your trademark is your official business name or a dba would not generally make a difference.

Lisa 11.12.12 at 8:51 pm

My company’s logo is registered and it includes our company name in it. Bur our company name is not registered on it’s own. From your post it looks like our name is covered since it appears in our logo. Do we need to use a registration mark after our company name in advertisements? Or is the registration mark after our logo sufficient?

Thank you!

Clifford D. Hyra 11.13.12 at 3:46 am

You cannot use the registration mark after your company name alone if it is only registered as part of your logo. I would not say that you are “covered.” Registration of a logo including a business name will confer some protection to the business name. How much depends on the nature of the logo.

Lisa 11.13.12 at 3:55 pm

Thank you very much for your help.

Candee 11.20.12 at 8:54 pm

Question –

My business partner and I started a DBA for our photography business. There was no one in our state doing business with this name. We were then contacted by another photog (in a different state) with the same company name. That company stated that their name is a common law trademark and that we are infringing on the name. From what we can tell, they have never registered to do business in the state we are in. Is this an actual infringement and do we have to change our name?

Clifford D. Hyra 11.21.12 at 3:46 pm

Candee,

Common-law trademark rights are generally limited to the geographic area in which they are used.

Justin 11.30.12 at 1:37 am

Hi Clifford-
Thank you for your insightful answers.

I have a domain name that I registered over a year ago, and over the past 8 months or so I’ve been building the product and service the business (to go by the same name as as the domain name).

I own the “.com”, but someone else has purchased the “.net” and “.org”. They are involved in the same industry, but not the exact same product and service.

If I register a trademark, can I send a cease/desist letter? ICANN records prove that I have had the name prior to them.

thanks!

Zoryana 12.02.12 at 7:45 pm

Hi Clifford,

I find your webiste very useful. Thanks for the great advice you give the small business owners.

I am about to launch my own beauty care company and I am looking for some guidance. I would like to quote Dr. Oz’s article and program on my website and in my advertising. Dr. Oz highlighted effectiveness of some elements that I would like to use in my product.

Is this legal? If so, are there are specific guidelines for quoting someone else’s statements online?

Thanks id advance!
Zoryana

John OHearn 12.03.12 at 4:40 am

Clifford -

I would like to talk to you about using your services to get my new business name and logos trademarked. I have some questions about the best way to go about it. The name and logos will be vital to the company as they will be used on apparel and merchandise.

Thanks -
John O

Clifford D. Hyra 12.03.12 at 8:18 pm

Adam and John,

I have contacted you privately.

Clifford D. Hyra 12.03.12 at 8:21 pm

Justin,

Assuming you were using the mark before this other company, you certainly can send a cease and desist letter. Depending on the circumstances, you may also be able to take those domains if necessary using the ICANN UDRP process.

Clifford D. Hyra 12.03.12 at 8:26 pm

There may be a state law issue here with creating the appearance that a celebrity is endorsing your product when in fact he is not. However, facts are not copyright protected so you should be able to make factual statements about what someone may have said about the topic, if you do it properly. I would recommend having an attorney look over your final web site and give you their thoughts.

Lily 12.04.12 at 4:07 pm

Hi Clifford,

I would like to open up a Bar & Lounge, is it necessary to trademark my name?

Clifford D. Hyra 12.05.12 at 5:13 pm

Lily,

There is no requirement that you must register your establishment’s name as a federal trademark. The main reason to do so is to prevent others from using similar names that might confuse your customers. Also, a clearance search is a good idea to avoid any conflicts with other existing businesses.

Glen 12.06.12 at 4:30 am

Hello Clifford,

I want to register the name of my web-based business with a standard character claim. In preparation, I did a name and trademark search for my name in TESS and nothing came up. However, I discovered that for the past two years someone has a .com domain with the same name as mine. When I went to the URL, it was an empty site (no content/logo) with only the name of the business followed by LLC. Should I assume that, after two years, the name owner has not legally protected his name and so might I claim the name as my own? Or will the current name “owner” have certain implicit protection via his domain – even though it appears that the name was never registered with the USPTO? Thanks!

Mike 12.10.12 at 4:43 pm

Clifford,

Thanks for the great information. I am getting a nation-wide start-up business organized for launch in the next 4-6 months. I want to have the name trademark now so that I can proceed with other activities (logo development, Incorporating, literature, etc.) knowing that the name is ‘clear’. I am assuming that this would be an “intent to use” trademark in this circumstance. True? My second question is whether to trademark the complete name (ex. Optimus building materials) or just the “Optimus” name. Does it matter? I would like to get your help in putting this together. Please send me the rate schedule and how to proceed. Thanks in advance for your help.

Clifford D. Hyra 12.11.12 at 5:31 am

Glen,

Owning the domain alone confers no rights. However, use in commerce does, independent of whether the mark is registered for the Trademark Office. So it is important whether this name has been used in connection with products or services offered for sale.

Clifford D. Hyra 12.11.12 at 5:33 am

Mike,

If you have not started selling a product or offering a service, then your application would be based on an intent to use the mark in commerce in the future. It is not generally necessary to include descriptive words in the registration, however I usually recommend registering the mark the way you plan to use it. I will contact you privately.

Marissa Lettieri 12.12.12 at 3:39 pm

Hi Chris,
I was wondering if you could shed some light for me, I brought a hairdressing salon a little over 2.5 yrs ago, changed the name and had all new design work done earlier this year it came to my attention another hairdressing salon which only started operating earlier this year had the same logo, so I got a copy of it and gave it to my artist who then confirmed the logo was basically copied exactly the only difference being my business name is incorporated into my logo, what are my options to get this salon to stop using my logo as in the future I want to b able to produce and brand retail as well as my salon with a logo which has been specifically designed for me…
Please help
Thanks
Marissa Lettieri

Clifford D. Hyra 12.12.12 at 5:05 pm

Marissa,

It is important to take immediate action against infringers to protect the strength of your trademark. Even if you do not register a mark, if it is in use in commerce you have legal rights within the geographic area where you do business. You can contact me directly if you would like a consultation.

jem 12.13.12 at 5:02 am

Hi my name is Jem I am owner of a tattoo shop in maryland I was wondering if it would be beneficial for me to trademark my company logo and name considering it’s a tattoo shop business would would trademarking its be beneficial

Michelle 12.14.12 at 1:26 pm

Clifford,
I have a small farm where I raise goats, chickens and other critters. I sell eggs to locals and am now making soaps. I also have a greenhouse that I will sell seedlings, flowers, natural fertilizer and such.
I have just recently drew up a little ditty to print on the labels for my soaps and anything else that I might sell from the farm that I raised or made.
DO I need to copyright/trademark that logo, my farm name or both?
Please advise, I really don’t have the $ for legal advise and was just going to do the electronic filing myself IF it’s what I need to do so that no one takes my little logo & uses it as their own.
Also I read above something about registering with the state?

Clifford D. Hyra 12.18.12 at 9:49 pm

Jem,

Well, if you register your trademarks that should prevent other, related businesses from using similar marks. So it would help if another tattoo shop opened up down the street with a similar name, for instance. Trademarks are probably less important for small, local businesses with no plans of expansion or franchising, but on the other hand trademark registration is relatively inexpensive so it could still be worthwhile.

Clifford D. Hyra 12.18.12 at 9:50 pm

Michelle,

You are not required to register it, but if you want strong protection against other businesses using a similar mark, then trademark registration is the way to go. You can register with the state, but people usually only do that if they cannot get a federal registration for some reason- like a conflict with another registered mark, or a lack of sales across state lines.

Kyle Nguyen 12.27.12 at 2:25 pm

A company based in Michigan owns the name for a plant they produce. I want to use the name for my company in California no one else has this name as their own company. Only the trademark for their product can I use this name for my business based in California. I wanted to trademark this name but found out they already had it in Michigan and don’t know if the name is protected in California is as well. Thanks

Glen 12.27.12 at 7:11 pm

Hello Clifford, could you contact me privately about assisting me register a business name/mark ‘Intent to Use’ application with the USPTO? This is for an ePub company (ID Manual ‘Publishing Goods’ with four additional classes). I understand that the entire USPTO application submission process will be changing after January 17th 2013, so I’d love to get this started. Thank you. My email is: gvecch@gmail.com

Derek 12.30.12 at 10:06 pm

Hello Clifford. I am a freelance graphic designer working under the name “DesignBuddy” or “Design Buddy”. My website is DesignBuddyDOTcom. I’ve been using that name for about 6 or 7 years now. My question is “is there any reason I should worry about protecting the name, and is it worth the money?”.

As far as I can see, it wouldn’t make sense for any designer to start using my name, especially since any quick google search will show that the name is in use. And even if someone did start using the name, I don’t think they would be much of a threat considering they’d have to be pretty stupid to use a name that is without question already taken.

Any advice would be greatly appreciated. Thanks!

Clifford D. Hyra 01.03.13 at 4:38 pm

Kyle,

You do not provide enough information to answer your question. If they have a federal registration for the trademark, then it is largely irrelevant what states you are in. But if the mark as used for your business would not be confusingly similar to the mark as used on their product, you may be able to use it without issues. You might consider getting a formal search and opinion from a trademark attorney.

Clifford D. Hyra 01.03.13 at 4:41 pm

Derek,

Well, maybe they would not be so stupid, maybe they would be looking to generate instant business by trading on your good name and reputation. Maybe they would not choose the identical name, but just a similar one like “Graphic Design Buddy” or “Design Buddies”. Your mark is not incredibly distinctive, and a federal registration could be of great help to you in enforcing your rights to the name, should you ever need to. Your use also gives you no rights in most foreign countries, if you do overseas business.

Mario Butterfield 01.05.13 at 4:35 am

Hello Clifford,
My name is Mario Butterfield, I’m a graphic designer. I’m currently working on the branding design for a new client. My client mentioned that she had just registered her company name & logo (a temporary logo that she constructed on her own prior to contracting me for the job). Now the question is, once I complete the NEW logo design, does she have to pay another fee for that? And if so, how much would the fee be?

Karen Francis 01.07.13 at 5:05 am

I am a in home business and have been doing a lot on my own due to such a small budget. I registered my trade mark and had the website company add the symbol to my website. I am not sure it was placed properly. After reading your information I find I may need to also register my logo. The attorney for the USTPO said I only registered my logo not my name but I believe , according to the USTPO site I registered my name also!? I am now confused I may have done this wrong. I would appreciate if you could give me some advice.
Thank you for any help you can give me.
Karen

Clifford D. Hyra 01.07.13 at 3:50 pm

Mario,

I responded to you privately as well. Material changes to an existing application or registration are not allowed, so if the new logo is significantly different it might be necessary to file a new application to protect the new logo.

Clifford D. Hyra 01.07.13 at 3:56 pm

Karen,

Based on your URL, I pulled up what appears to be your registration. It is for a logo, which includes a name. As I discuss in the above article, that provides some protection for both the graphics and the words in your logo, although not as strong as if you did a separate registration for just the words or just the design.

One registration for design and words together may make sense where they are usually used together, the budget is small, and both elements are important and distinctive.

Doug Hitchcock 01.10.13 at 10:38 pm

Thanks, this is a great thread…even after reading through the USPTO site backwards.

If a company wants to protect BOTH its icon logo as well as the name, you suggest using “TM” at first and then going for full “(R)” registration of BOTH elements…
If you use both the icon/logo and the name together do they BOTH then carry the (R) mark?

Clifford D. Hyra 01.11.13 at 5:32 am

Doug,

It generally is a good idea to use “TM” or “SM” with a mark until it is registered and you can use the circled-R. The maximum protection for each element (logo/words) would be achieved by registering each one individually. If you have two registered marks in close proximity, you should use the registration symbol for each one.

Kevin S 01.11.13 at 7:29 am

Hi there!

I was wondering, I run a successful tourism business, and now there seems to be someone who wants to mimic my idea. He already had a party bus company, and is doing business under that business name, but he bought a domain name that is more specific to the tours. As an example, a company called Pittsburgh Party Bus, LLC, wants to get into brewery tours, so they buy the domain name Pittsburghbrewerytours.com. I own the domain name Pittsburghbrewbus.com If I were to trademark (or whatever is stronger) the legal name Pittsburgh Brewery Tours, could I force him to stop using that phrase and/or domain name?

Scott 01.13.13 at 4:12 am

Clifford,

I have a weird scenario. So our company is looking at creating a product with a certain brand. We did a quick search on google, the uspto.gov TESS everything was clean so then we acquired the domain name. After some initial work we realized that a company actually was using the name on a product 3 years ago. They even put the the TM next to it. The funny thing is that they never actually filed for the mark. They just stuck TM next to every little name on their products without even filing (is this legit by the way). Three years later they are no longer selling the product with that mark. The BIG question is, can we file for the name and if we win the mark without opposition can they come back and say that we owe them anything because they used it before us even though they failed to register the mark? It is also similar classification and product. Is it worth pursuing this mark given this scenario? Thank you for your help.

Clifford D. Hyra 01.16.13 at 5:49 am

Kevin,

Sounds like a bad idea. First of all, to get a trademark registration you have to actually be using the trademark in commerce. Second, a prior user of a trademark actually has priority over someone who later registers that trademark.

Clifford D. Hyra 01.16.13 at 5:58 am

Sure, you can put TM on anything you consider your trademark, regardless of whether you register. If a prior user has abandoned a mark, you are free to take it up and use it, however the question of whether they have abandoned is a legal one. If they never had a registration, they only have state law trademark rights anyway, which vary between states and can be limited. I would go to a trademark attorney with more details.

Notyplay 01.19.13 at 7:51 pm

Hello. I’m an active DJ and would like to use the name and logo of a dead trademark. It’s been three years since it has been deemed dead. Is there anyway I could reregister the name and logo? The original company used the name and logo to sell poultry. I would change the logo a little to make it more modern. I would like to use it for entertainment and possibly clothing. Is this possible? Thank you

Laura 01.21.13 at 3:26 pm

I am the manager of a Pilates Studio that opened in 1999. We have a main logo that was created before the business opened. We created a 2nd logo for marketing materials over 3 years ago. We are the known studio in Nashville. We win best studio every year. We train all local pilates trainers. In 2012, a studio opened and “after much research, created a unique logo”…guess what? It’s close but not our marketing logo. The similarity is that it is round with PILATES through the center. Different font. Different color. Different studio name. We never even knew she existed until she sends us a letter, telling us to stop using her logo. She trademarked it. We did not. What can we do? Does the fact that we have been using this for years matter? What similarities in a logo matter? What do we do now to fight this?

Teddy 01.22.13 at 7:41 am

Hi,
I am in the process of opening a new bar/restaurant in Pennsylvania. I just found out The name my branding company any myself decided and have been working on is identical to another. the name is spelled differently though for example Brew and BRÜ. would this become an issue? The corporation name is obviously different.

Davence 01.22.13 at 9:20 am

Hi, i had a quick question for you, i just registered my business as a dba since it deals with building works of art for my clients. I am wondering if registering it as a dba will serve me fine since it will be a small scale business, or should i have it changed to an LLC?

Alecia 01.23.13 at 7:38 pm

OK, after reading your article and twenty or so comments, my head is going to burst! :)
I have a name for a business I want to trademark. Its for a nail salon. Since there are many ways you can use a name for a salon, for example, “The Red Doll Nail Spa” “The Red Doll Nail Bar” or “the Red Doll Nails”. Would I have to trademark all of the names just so they can not use anything salon related to the phrase “The Red Doll”? That is obviously not the name I am using, but the name I am means a lot to me and what it will represent. I wish to expand later and have a polish line too. I am still working on my logo so I will file a second trademark for that later. What would I have to file or do in order for that particular phrase to never be used in the nail industry? Thank you!

Leslie 01.24.13 at 4:53 pm

Hi,

I’m starting a small business and I’m running into many problems. I was told to apply for a LLc or a S.Corp to protect my buisness name from people stealing it and using it. I was also told since I’m the only one in the company I was also told to file as sole proprietor. One of my questions are, If I have a business name but under my business name I want a brand name that is a solgan am I able to and should I trademark both? My second question is, Do I have to file for a trademark? My third question is, Which business form do I need to apply for LLc, S corp or Sole Proprietorship

Thank you for your time.

Janet 01.24.13 at 9:32 pm

Hello Clifford,
Thank you for sharing your knowledge. I have read the extensive information on whether to trademark a name and logo together or separately, and the steps that may need to be taken if a logo is redesigned down the road. However, I have a unique situation that I am hoping you can shed some light on.

My business partner and I run an event based company. We have a business name and a main logo that we utilize for business cards, flyers, advertising, clothing & accessories, etc. However, we also have several additional logos that we use on clothing & accessories in order to offer our customers a variety of designs to choose from..

In our situation, what would be the best trademark scenario to protect our name and multiple logos. Trademark name and main logo together or separately; along with individual trademarks or perhaps copyrights on each additional logo design? We are looking for the best protection but obviously cost is a concern we need to factor into the pros and cons.
I greatly appreciate any help you may offer.
Thanks, Janet

Sabrina Ingram 02.01.13 at 3:18 am

Cliff~
My husband and I opened a 180 Cafe, in Lebanon Ohio June 2012, We checked the trademark agency and there was no name trademarked. We filed through our state agencies and opened for business. In Nov 2012 I received a letter from Cafe 180 in Engelwood Colorado (name reversed & over 1300 mile away) under legal threat to change our name. They filed for trademark in July 2012 (after we opened) . Do they have a case? We checked the proper channels and we are a reversely and 1300 miles away. I filed for protest of their trademark but have not heard back. Suggestions????? HELP??

Adam Dupuis 02.01.13 at 10:15 pm

This is to Mr Clifford D.Hyra.

I would like advise on a way forward.I have LOGO AND I WANT TO DO AN ONLINE STORE.
But i need to protect my name and logo first,what can you advice.
Thanks

Adam Dupuis 02.01.13 at 10:28 pm

How can one contact you directly/

lee 02.03.13 at 3:35 am

I am just in the process of starting a tshirt and clothing site. I have trade marked the phrase I will be using. My question is simply, as a designer , I am adding design logos I have created to the phrase that is trademarked. Will I run into any legal problems selling these shirts when it is the phrase that is trademarked ?, not the logo designs I am creating to go along with the phrase. I have created 5 so far, that could get very expensive to Trademark. Thank-you for your time.

Clifford D. Hyra 02.04.13 at 5:33 am

Notyplay,

If the logo was previously used for poultry and you want to use it for DJ services, you probably could have done that even when the mark was alive, unless the mark was famous. Likelihood of confusion takes into account differences in products/services and some marks are registered identically by dozens of businesses in different fields. Still, you may want a trademark attorney to take a look at the mark to verify that you have all the facts correct and give a legal opinion.

Clifford D. Hyra 02.04.13 at 5:36 am

Laura,

Yes, use matters. Generally, the trademark rights go to the first business to use the mark in commerce OR to apply to register the mark, whichever comes first. If you started use in commerce before another business used it in commerce or filed for a trademark registration, generally you have priority over them and can cancel their trademark registration. Talk to a trademark attorney to look into the matter and send them a letter back explaining the situation. You should consider petitioning to cancel their trademark registration.

Clifford D. Hyra 02.04.13 at 5:37 am

Teddy,

It could absolutely become an issue. Spelling is mostly considered irrelevant in a likelihood of confusion analysis (the test for trademark infringement).

Clifford D. Hyra 02.04.13 at 5:38 am

Davence,

That is beyond the scope of my practice and this blog, as it is a business law issue. Contact a business lawyer to discuss the advantages of incorporating, etc.

Clifford D. Hyra 02.04.13 at 5:39 am

Alecia,

If you are using a mark with many different descriptive endings, you should consider registering just the non-descriptive portion. It is generally acceptable to leave off descriptive elements in a trademark application. But, you should consult with a trademark attorney to ensure you file your application correctly and are best protecting your interests.

Clifford D. Hyra 02.04.13 at 5:41 am

Leslie,

Trademarks are for brands and are consumer-facing. If you have a business name that is only used for legal purposes and is not consumer-facing, it may not be suitable for trademark registration.

There is no requirement that you register your trademarks, however registration confers powerful benefits that help you to stop others from using similar marks.

The right business form for you is something you should discuss with a business attorney.

Clifford D. Hyra 02.04.13 at 5:47 am

Janet,

I think you need to take the details to a trademark attorney and go over the whole situation with him or her. I really can’t give you any advice just based on what you have told me. I need to see the marks and understand how you are using them.

Clifford D. Hyra 02.04.13 at 5:48 am

Sabrina,

Generally, if you start use before another business files for trademark registration, and that business does not operate in your geographic area, they are not going to be able to stop you from continuing to use the mark. However, they may be able to stop you from expanding geographically. Talk to a trademark attorney for more details and how best to respond.

Clifford D. Hyra 02.04.13 at 5:49 am

Adam,

I can be contacted at the information in the About Cliff tab of this website.

Clifford D. Hyra 02.04.13 at 5:50 am

Lee,

A trademark registration does not allow you to use a mark, it prevents other people from using that mark. It is not necessary to register a logo before you start using it. However, depending on the circumstances you might want to make sure you are not infringing on someone else’s trademark.

Meredith 02.05.13 at 12:04 am

Hi,

I am just wondering if I can register a trademark on a logo but not my business name. Somebody already has trademarked the same business name that I want but not the logo. To me my logo is more important to be trademarked even though the business name that I want to use is already trademarked by someone else. Can my business name be the same as the other trademarked name but only register the trademark on the logo that carries the same name as the business? In other words my logo carries the same name of my business yet it looks totally different than the logo of the person who had the business name trademarked. I just want to trademark the logo even though it is the same name of the business that has already been trademarked. Hope this makes sense…

Thanks!

Jon K. 02.06.13 at 6:48 pm

Great site. Very informative.

I formed an LLC in NY over the summer. Previously, I was using the same name just as a DBA for a number of years. I looked up my LLC’s name on TESS to start the trademark process and found that a different company has just recently trademarked a very similar name (mine is two words, they combine and capitalize it as part of their brand) for a non competing product in a completely different industry/class. Is it worth the effort to trademark my business name, or will there be an issue because it is too similar? And would it matter at all if I simply added “LLC” at the end of my trademark registration? Thanks!

Kim 02.06.13 at 11:54 pm

Hello I want to start a business with fitness gear with my a name , basically workout clothing with my company name on it ,But was told i have to have a trademark before i start .Is this True i would think to register with my state first and get the clothing first before i trade mark it the company name so there will be proof it is being used? What would be my first step ?

Debbie 02.09.13 at 6:40 pm

I am in the process of starting up a business. From what I’m understanding, I should trademark the name and logo separately. How much does that usually run you?

Tamara Patterson-Taylor 02.12.13 at 7:53 pm

We have a product line with a logo that is registered. My quandary is that I cannot find that the actual name of the product line to be registered. I’m developing corporate guidelines to maintain consistent use of our branding practices, including current trademarks–registered and not (i.e. TM). I cannot state that the product line name is a registered trademark, nor use a registered trademark with the name in print, as in in a catalog listing. Can we use TM to denote ownership when in print? I have another example of this where the name is rather common, but the logo, itself, was distinctive, thus necessitating the need to file for a registered trademark. Thank you in advance for your help!

Walker 02.13.13 at 11:14 pm

I have an issue that may be a problem in the future. In 2006 I registered a website domain named makeoverfitness.com and registered the company name makeoverfitness LLC. in 2008. Neither has been trademarked. While searching, I noticed their use to be a tv show called “Extreme Makeover Weightloss Edition”. It was about losing weight which is the same field I am in. Fitness. They also published a book titled “Extreme Makeover Fitness” in 2003. I never thought about it until I was about to trademark my domain and business name. I don’t want to lose my business name and especially my domain name in the future. Do you see this being a problem for me? If so, what should I do to keep at least the domain name?

Britten W. 02.19.13 at 2:31 pm

Good morning! I have a registered Trademarked logo that I used for an online journal. I have since started a wholesale/retail business for home goods and would like to use the same logo. The business names are different and the logo is just a design. Do I need to file something? Do I need to amend the intent of use?
Thank you-
Britten

Clifford D. Hyra 02.22.13 at 4:54 am

Meredith,

I would really have to know the name and logo and look into it to give you a good answer. If two marks share the same words, one is a standard character claim and the other includes a design, the design alone is generally not sufficient to avoid likelihood of confusion. But it could be that your products/services are different enough, or the name is diluted enough, etc., that there would be no confusion anyway.

Clifford D. Hyra 02.22.13 at 4:56 am

Jon,

Adding LLC won’t help. If the products and industries are truly that different, you likely would still be able to register your name. I’d have to take a look at it to give you a better opinion.

Clifford D. Hyra 02.22.13 at 4:57 am

Kim,

It’s not required that you register your trademark at all. However, the safest thing would be to at least clear the mark before you start using it, and think about filing an intent to use application as well. If you find out there is a conflict after printing a lot of clothing, that is going to be an expensive problem.

Clifford D. Hyra 02.22.13 at 4:57 am

Debbie,

It varies widely. The USPTO fees are usually $275 per class of products/services, per application. You can contact me directly if you want to know my fees.

Clifford D. Hyra 02.22.13 at 4:59 am

Tamara,

Right, you would use TM for an unregistered mark (or SM). Think about a registration for the word mark as well- even if it used to be merely descriptive, it may have acquired distinctiveness with use.

Clifford D. Hyra 02.22.13 at 5:01 am

Walker,

If it’s not being used anymore and it’s not registered, it’s likely (not guaranteed) that you can proceed without an issue. If you want to fully understand the issues and get a formal opinion, pay a trademark attorney for a clearance search.

Clifford D. Hyra 02.22.13 at 5:02 am

Britten,

You don’t need to register a mark to use it in commerce. If you want the logo to be protected for your new goods, you need to file a new application.

Alicia 02.26.13 at 4:27 pm

Hello, I have been doing my research about trademarks and DBA’s. Im a photographer and I simply just don’t want anyone to take the name I’ve been using. I read on the USPTO website that even if they deny my name they wont refund my money. I called to ask them what reasons would they have to deny me and the lady was no help. Im just wondering other then the name already being used what other reasons would they have to deny me. I really dont want to spend $300 for nothing.

Diamond 02.27.13 at 12:57 am

Hi, my problem is that someone has a trademark with the name i want to use but they have a logo trademarked with the name in a stylized font as a trademark. Can i still trademark the name alone as a standard character? Or will i get denied? Also they are trademarked in class 25 which i also want to trademark in.

Thanks in advance.

Jose D. 02.27.13 at 11:24 pm

My question is this, after my name name is trade marked would anyone else using it would have to drop it instantly? And is it something I let them know to do so myself or should an attorney contact them?
Jose210.

Michelle 03.02.13 at 12:55 am

Please help!! I want to trademark a clothing brand to sell apparel, but the name I want is very similar to another company selling under the same class. The only difference is my name includes “of” in between the words that are similar. Example: Run Now and Run to Now. Would it be better for me trademark my logo that includes the brand name I want? My line is for women and girls only. Can I include that description on the application to try and trademark the name?

Junior 03.03.13 at 4:21 pm

Hi I’m in a rock and a hard place and just don’t know what to do.Im not running some type of buisness I’m looking to run a publication such as launch a magazine here in Texas I have not printed the magazine yet and really doesn’t exist.All I have is the name I’m going to call it and I want to IMMEDIATLY protect it with a trademark.Example I’m living in Austin and I want to call this magazine Austin edible.Now I read all up and down the state of tx FAQ sheet and it says to be register a trademark IT MUST BE ACTIVE BEFORE REGISTRATION.Somehing like “selling goods and advertisising services.Well I have none of those but a website which has the same name and is a .com website and I do offer marketing and advertisement and articles etc.I just don’t know what to do there has to be some way I can trade mark this magazine title without going naked out there first to make a track record after website launch I suspect competition can see what I’m doing and try to trademark before I do.Also everywhere I go it says to get uspto this and uspto that but this is a “local” magazine not a national one.So a uspto would be meaningless.Please throw me a bone here IMMEDIATLY before I lose all hope THANK YOU!!

ernest valdes 03.03.13 at 11:12 pm

My wife and I own the buisness. we are in the process of a divorce. I want to protect the name and logo form my own. It was my sons emblem designed and he has pass on and it is for his memorie. Thank you for any info. Ernest

charles 03.05.13 at 8:41 pm

I have something small in mind. A facial cream,or skin cream

that has four , safe,natural ingredients. What is the simplest
and least expensive way to go in getting some protection on
this item ? Grateful if you can email me.
Respectfull, charles

Rob M. 03.06.13 at 2:54 am

Hello, I recently filed for a trademark (using a two word name) w/ Legalzoom.com using standard character registration and received the search results back. It turns out there is a very similar sounding name as mine also in the same product field (i.e. t-shirts of baseball culture and terms) but my company name is spelt different and my brand has a completely different style to the images. Here is an example: Their name- “BASEBALLWORD.biz” and my name- “Baseball Werdz”.
Do I still have a chance in being approved? Would this be an example of submitting a logo with the name to show how it looks different? or would you recommend I still submit them separately?

Dawn 03.09.13 at 5:43 pm

Hi Clifford!
Please contact me! I am in need of trademarking my logo, which includes my name. I’m a little leary about using it out without some protection, as it is simple and catchy! I would also like to know the answer to m.david’s question on 2/22/12. Thank you!!

Ryan 03.14.13 at 1:58 am

I started a clothing line, and registered a trademark. I searched the trademark database first before starting the name. I started having shirts made, and then someone contacted me and said that they owned the “rights”. I emailed them and stated that I own the trademark rights and showed them a copy. They then put some of their social media sites private after I sent an email. I searched to see if they did copyright the logo – and they did. But it is a logo, and usually people trademark these instead (from what I was told from many professionals).

My question is if they registered a “copyright” for the logo in December of last year, and I registered the trademark in February of this year.
Which is more enforceable(not sure if this is the right word) to ownership?

What would my options be to settle this?

Joakim 03.16.13 at 4:37 pm

Hey there,

If i want to register a brandname for one of my products but there are one other company in the same “area” according to Swedish brand name registration institute, even though we’re not doing the same thing, im dealing with light other company dealing with ovens, is it ok to register the name and add something extra like light at the end of the brandname? Can i use the logo without the light at the end of it if so?

Lynn 03.22.13 at 5:17 am

Thank you so much for all the answer it so helpfull..
I am just on the process of appying my registereig my busines..
1. The name of my Bussine for example is Moreno LLC.. and my Logo for my brand would be just Moreno with defferent font from Moreno LLC.. Witch one should I trademark to protect the name and the brand??
Please contact me via email.. to discuss more info ..
Thank you

Eric Peterson 03.25.13 at 5:04 am

I accidentally registered my trademark for my website under my own name somehow. The Trademarkia site and US GOV site are both showing my full name AND my mailing address!

Is there any way to hide these, and are there any worries legally in having applied the website to my own name? I don’t have a company for the website technically, it’s just a LLC, so I didn’t know what else to do. The lines for “Company” were not filled in because of this, so they must have just used my name.

A big worry is if I can be sued personally now, instead of somehow otherwise. What can I do here?

Thanks

Terica 03.26.13 at 3:25 pm

Hi,

First thanks for the article, I recently opened a graphic tee business I want to get my logo trademarked because it has our name and will be on custom shirts. This issue is other self started graphic tee-shirt sellers. I looked at some of the top worn brands in my local area(poplur saying, rap movement phrases, etc) how do I confirm that they have not trade marked the logos they use so I can legally print if customer request?

Thanks You can also email me private if needed tericag11 AT gmail.com

Melanie 03.29.13 at 8:17 pm

Hi there…
I am starting a sole proprietorship and will get the business license, etc done next week. Should I register my business name after the name is filed with the State of CA? And I was going to use a Legal Zoom type but after reading what you said, I could you use your help if you can be comparably priced! Thankyou very much!

TOM 04.01.13 at 1:07 pm

hey,
It is my understanding that trademark fee is around $375, but does USTPO allow more than one logo inside of the pdf file to send out via TEAS Filling? i have up to 6 logos…

tn2ncgal 04.05.13 at 3:43 am

Finally! Somebody who has answers! I am in the process of opening a third location and I currently have business locations in two states and have been working on a new location in a third state. I have been considering a service trademark, but being 27 and somewhat naive in that area, I have put it off. When I first started my business, I did a database search for my business name. I found a couple, but our services were completely different. Those businesses are also across the country. A retired lawyer friend told me a long time ago that two businesses can register the same name as long as their services aren’t the same. They may also be able to register the same name if the two businesses do not cover the same territory. I thought I was safe in waiting. I picked my business name, designed a logo, and went to work. A few weeks ago I noticed something I didn’t see before on the data base search. The same state I have considered for my third location already has a business by the same name! Our services are different, our territory doesn’t come close to overlapping, and they are a single location only offer services in their general area. My biggest concern is that our logos have a few similarities. X business registered their logo which contains the business name just like mine. I noticed on the trademark listing that X business has the trademark on the logo and it specifies characteristics that I assume others can’t use ie: girl with a pony tail, silhouette of a girl ect ect. Now! I guess my question is If X business and my business offer different services, are not crossing paths, but have slightly different logos and the same name, can we both have a trademark? Even though it would be so sad for me to have build a successful business and have to change my logo or name, what would you suggest me do to be in the clear. Thanks so much.

Clifford D. Hyra 04.05.13 at 9:21 pm

Alicia,

Check out the TMEP, especially the substantive examination guidelines: http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/d1e2.xml#/manual/TMEP/Oct2012/TMEP-1200d1e1.xml. There are lots of potential reasons they could deny you. Spend a few hundred more on a lawyer and things should go more smoothly.

Clifford D. Hyra 04.05.13 at 9:23 pm

Diamond,

I can’t give you specific advice since you are not a client. But generally speaking, it is not possible to register a standard character mark when the same mark is already registered in a stylized form for similar goods/services.

Clifford D. Hyra 04.05.13 at 9:23 pm

Jose,

It really depends on the context. If someone is infringing your trademark rights, you should have a lawyer send them a cease and desist letter and be prepared to have to litigate the issue.

Clifford D. Hyra 04.05.13 at 9:24 pm

Charles,

I would need more information. You could protect the name and branding with trademark registrations. If the formula is new and nonobvious maybe you could get a patent.

Clifford D. Hyra 04.05.13 at 9:26 pm

Rob,

I can’t give you specific advice since you are not my client. Generally, minor spelling differences and the like will not be sufficient to distinguish two marks. Maybe if one is very descriptive. If there is a potentially conflicting registered design mark, it may make sense to apply for your own design mark as the design differences will be another basis for differentiating the marks.

Clifford D. Hyra 04.05.13 at 9:30 pm

Ryan,

Registering a copyright does not give you any trademark rights. Only use in commerce and/or trademark registration gives you trademark rights.

Clifford D. Hyra 04.05.13 at 9:31 pm

Joakim,

Sorry, I have no idea what the rules are in Sweden. Also your question is very fact-specific. I would hire a lawyer.

Clifford D. Hyra 04.05.13 at 9:32 pm

Lynn,

The article you are commenting on addresses your question. It depends.

Clifford D. Hyra 04.05.13 at 9:33 pm

Eric,

You can transfer the application to your LLC if you want. An LLC is a company.

Clifford D. Hyra 04.05.13 at 9:35 pm

Terica,

I am not sure what you are asking. I would not print someone else’s brand name on a shirt regardless of whether they had registered that brand name as a trademark. You can search on the USPTO.gov website for registered trademarks.

Clifford D. Hyra 04.05.13 at 9:39 pm

Melanie,

You can register your business name as a trademark if you want exclusive rights to the name in connection with your products/services in the U.S. You could probably file now in your own name if you are the sole owner, or you could wait for the corporate entity.

Clifford D. Hyra 04.05.13 at 9:39 pm

Tom,

No. Each logo would be a separate registration with a separate fee. The fee is $275 if filing electronically using TEAS Plus. You should probably pay a lawyer to help you, though.

Clifford D. Hyra 04.05.13 at 9:41 pm

tn2ncgal,

You need to hire a lawyer. I can’t give you specific advice, your question is very fact-intensive.

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