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!
{ 38 comments… read them below or add one }
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?
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.
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!
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.
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?
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
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.
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.
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
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.
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!
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.
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.
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.
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.
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.
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!
my email is [Mod edit]
Many Thanks
RE: can I AM be trademarked? and if yes, to do so. Thanks
David, I have contacted you privately as requested.
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.
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!
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.
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.
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
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!
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.
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?
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.
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?
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.
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
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
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.
and I posted earlier under the name Alex that’s my middle name
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.
Nigel,
I will respond to you privately.
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
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.