Trademarking a name - the common misconceptions

When it comes to trademarking a name, the only stupid questions are the ones that you don’t ask. Unfortunately, this is something far too few business owners are willing to acknowledge. Every year, thousands of entrepreneurs try to navigate the trademarking process using only their intuition and every year just as many entrepreneurs have their applications rejected without refund because their intuition turns out to be wrong. Consequently, the brands they’ve worked so hard to develop and protect are left needlessly weakened and vulnerable.

Don’t let your pride take the same toll on you. Protect your brand and your livelihood by trusting the facts – not your gut – and making sure not to fall victim to any of these misconceptions about trademarking a name.

The Misconceptions

I Shouldn’t Use My Name Until It’s Been Registered

One of the most common misconceptions regarding trademarks is the unfounded suspicion among business owners and entrepreneurs that they should avoid using their trademark until it’s been approved and registered by the United States Patent and Trademark Office (USPTO). The people who operate under these pretenses do so because they’re afraid that if they go public with their name, the competition might notice and try to steal their name from them.

In a competitive economy like ours, this isn’t an unreasonable attitude. The last thing you want is for another business to steal the idea or product you’ve worked so hard to develop. However, when it comes to trademarking a name, keeping your name a secret is the opposite of what you should do.

Assuming your name doesn’t violate any existing trademarks, you gain “common law” trademark rights the minute you use it in commerce, regardless of whether it has been registered by the USPTO. Furthermore, registering a trademark with the USPTO requires you to prove that you’ve used the name in commerce – which will be hard to do if you’ve been keeping it under wraps.

The smartest thing you can do to protect your name is to use it commercially as soon as you possibly can after confirming through a comprehensive trademark search that there are no conflicts with any other trademarks. This way you can build a strong case to show that you qualify for the rule of “first use” when you do file with the USPTO. Even if your competitors try to copy you while the application is pending, you should be able to prove that you got to the name first – which is the key to getting your trademark registered.

To learn more about starting your trademark registration early, check out our post Should You File for a Trademark Before Your Product is Market Ready?

My Trademark is Totally Original, I Don’t Need a Search

Here is some news that you might not want to hear – the name you want to trademark probably isn’t as original as you think it is, at least not in the eyes of the USPTO. Every year, thousands of trademark applications are rejected without refunds because they too closely resemble existing trademarks. Even if your mark only slightly resembles an obscure trademark you’ve never heard of before, the USPTO may still reject your application.

Given the sheer number of trademarks currently registered in every category, it’s a good idea to have your application pre-screened by a trademark attorney to ensure that you aren’t running blindly into a brick wall. Ideally, your trademark attorney should search both registered and pending trademarks, domain names with your mark, any common law uses of your mark and any other legal issues that could bar you from approval.

While an attorney-led trademark search won’t guarantee approval, it will position you much better than simply filling out an application and hoping for the best.

For more information on what you should do before you file a trademark application, check out our post Before You File a Trademark.

My Competition Never Filed to Trademark Their Name So I Can Steal It, Right?

Keeping with the rule of “first use,” just because your competitor has yet to register its trademark with USPTO doesn’t give you legal grounds to appropriate it for yourself. While you can certainly pay to file an application on the trademark that your competitor uses, your application will be open to opposition at some point – and all your competitor has to do is prove first use of the trademark for your application to be denied.

In fact, this is exactly what happened to DuClaw Brewery when they tried to trademark the term “EUPHORIA”. After getting the trademark approved, they tried to enforce their rights against a competitor who also brewed a beer called Euphoria, only to find that the competitor had used the name first. Consequently, their trademark was cancelled. You can read more about it in the Research, or Lose Your Trademark section of our post on the story.

In general, it is not advisable to pursue any trademarks for which your competitor can invoke the rule of “first use”. In some rare cases, though, it is possible to obtain the trademark rights to your competitors’ intellectual property.

Learn more about them in our post Legal Ways People Can Steal Your Intellectual Property.

Owning a Trademark Means I Own Exclusive Rights to the Word

Contrary to what you may have been told, a trademark does not mean that you own the exclusive rights to any word in the United States. Nobody enjoys that kind of power because it would be both unenforceable and toxic to a competitive economy.

The purpose of a trademark is to protect consumers by verifying the origin of a product or service that they purchase. As a result, trademarks are only issued across specific classes of goods and services. For example, there is a company called Delta that flies planes and a company called Delta that makes faucets. While each company owns the rights to “DELTA” in their respective industries, neither can challenge the other for total ownership of the word.

This is because there is no likelihood of confusion between the two brands. The point of trademark infringement laws is to protect consumers from confusing two similar products. If there is no potential confusion between the word you own and the same word appearing in a competitor’s product, then there can be no argument for trademark infringement.

I Can’t Use the TM Symbol Until the USPTO Approves My Application

Just because the USPTO hasn’t yet approved your trademark doesn’t mean you can’t fly a TM symbol proudly on your website or place of business. Legally speaking, attaching a TM symbol to your name only means that you are asserting a public claim of ownership to the trademark. It does not mean that your name has been registered by the USPTO. Assuming that your name doesn’t infringe on any other existing trademarks or service marks then you can feel free to attach the TM symbol to it.

I Can Use the ® Symbol and the TM Symbols Interchangeably

Unlike the TM symbol, the trademark registration symbol (®) is an official indication that your trademark is officially registered with the USPTO. Attaching this symbol to any unregistered trademarks is prohibited by federal statute.

Until your trademark has been registered, you should only be marking your name with the TM or SM (Service Mark) symbols.

For more information on the proper use of the three trademark symbols, check out our post The 3 Trademark Symbols and What They Mean.

My Name Isn’t Identical to an Existing Trademark So It Will Definitely Be Approved

Another common misconception people have about trademarking a name is that their name only has to be slightly different than an existing trademark to be registered.

This is simply not the case. The essential function of a trademark is to protect consumers by verifying a point of origin for the goods and services that they purchase. Therefore, any trademark that could be easily confused with an existing trademark will not be approved by the USPTO.

For instance, you could not register a burger restaurant under the name “MACDONALDS”, because this name clearly attempts to associate itself with the established trademark of “MCDONALDS”. Proof that the name is actually confusing consumers is not necessary here. If the USPTO deems your application to be “confusingly similar” to another prior-registered trademark, then your application can be denied without refund.

To learn how to distinguish your name from the competition, check out our post Trademark Research to Conduct Before Filing Your Application.

Once My Application Is Approved, It Is Recognized Worldwide

Just because your trademark is recognized in the United States does not mean that it is recognized everywhere else in the world as well.

A trademark registered by the USPTO is only valid in the United States. If you want to secure international protections for your mark, you must first register it with the USPTO and then apply to register it through the Madrid Protocol.

I Own The Trademark, Therefore I Own The Domain Name

Considering how important the Internet has become to businesses, it only makes sense that many trademark owners might wish to use their trademark as a domain name for their business website. In that case, it’s important to understand that trademarks and domain names are regulated by two completely different agencies in the United States.

As far as the law is concerned, a domain name isn’t the same thing as a trademark. Consequently, it is possible for someone else to legally own domain names associated with your trademark provided that they are not using the domain in a way that infringes on your rights as owner of the trademark. In that case, your only recourse is to either purchase the domain name from its owner or to find another home for your mark on the web.

To learn more about how trademark registration works in relation to domain names, check out our post Does a Trademark Registration Give You Rights to the Corresponding Domain Name?

Put the Misconceptions to Bed

Don’t let misconceptions about trademarking a name put your business at risk. Get educated about trademark law by using the resources available to you on this blog and elsewhere online. Do your research, learn the process and don’t hesitate to contact a trademark attorney for assistance. The more you know, the safer you and your business will be.

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