When youve found a great business name, you might well start thinking about registering it as a trademark. After all, your brand name is a business asset, so protecting it makes a lot of sense.
The trouble is, the whole area of trademarking is full of misunderstandings and confusion.
The following ten facts should provide some of the fundamentals, clear up a few confusions and de-bunk a few myths along the way.
(1) A trademark is not the same as a copyright or patent
Trademarks, copyrights and patents are all types of Intellectual Property, but each protects something different.
Copyright is automatically granted to the creator of an original work (like a book, song or design) and protects their rights over its use and reproduction. A patent offers similar protection to the inventor of a product or process. How to copyright a logo UK
A trademark however, is simply a recognisable word, symbol, or design that identifies a business as the source of specific goods or services. Registering a trademark enhances its legal protection.
(2) Registering a business name is not the same as registering a trademark
All business names have to be registered with the relevant authorities before the business can trade legally. This is Companies House in the UK, and the county clerks office or relevant state government in the US.
To register the name of a business, it can’t be identical to another business name and must follow certain rules, but this is simply the registration of a legal entity and has nothing to do with trademark protection.
(3) A business has to be up and running before it can register its name as a trademark
You can’t register your name as a trademark before you start up. The business has to be a going concern and using the name in question to apply for trademark registration.
So make sure youve checked the viability of your application with a trademark specialist before you commit to your chosen name.
(4) Descriptive or generic words can’t be registered as trademarks
A trademark must have distinctive character. In other words, your business name can’t be registered if it uses generic words or words commonly used in your sector (even if theyre misspelled).
Business names that are entirely made-up, or subtly suggestive, are therefore easier to register.
(5) Your name doesnt have to be unique to be a registered trademark
Two or more companies can register the same word as a trademark, so long as they are registered for different products or services, or in different countries.
The existence of a registered trademark elsewhere in the world, in an unrelated sector, shouldnt prevent you from registering the same trademark for your business.
Curious to find out more facts about trademarking your business name Read five more facts on page two…
(6) Theres no need to register your domain name as a trademark
Registering your business name on its own without the .com will offer you full protection, because nobody can simply add a domain extension to a name that is otherwise identical to a registered trademark.
(7) Each registration covers specific goods or services in just one country
Registering a trademark only offers protection in one country and it only covers you for the specific goods and services that you detail in your application.
However, you can apply for registration in multiple countries with just one “bundled”application. The Madrid international trademark system covers nearly 100 countries, and the Community trademark system covers just the European Union.
(8) A trademark registration can’t be amended
Your registration has to be renewed every ten years. Although your business may change over that time, you can’t change the goods or services covered between renewals, so you should include all potential goods or services in your initial application.
(9) Anyone can use the TM symbol next to their business name
Adding a TM to your name or logo is simply a way of asserting a general claim to a trademark under Intellectual Property law. Theres no formal registration process to go through, and it carries no legal weight.
Only registered trademarks have full legal protection, and only registered trademarks can use the symbol.
(10) Taking legal action is up to you
Registration makes protecting a trademark easier, but taking legal action to enforce this protection is the responsibility of the trademark owner, not the registering authorities (the USPTO in the US, or the IPO in the UK).
Dave Clark is a branding and naming specialist and is co-founder of brand name store Novanym.com.
