Does a soon-to-be corporate name, DBA or web domain name protect my desired name from use by others under trademark law or do I need to take additional steps?
No, the registration of your corporation name or state DBA registered pseudonym does not prevent others from using your name in conjunction with the sale of goods or services. A domain name (e.g., http://www.mydomain.com) only lets the registrant use the name as a web address to point others to particular web content but in and of itself does not prevent another from registering the same term with the Trademark Office.
So having a domain name or business name does not mean that you have a trademark registration-or even any trademark rights at all. In order to reserve a trademark with the Trademark Office you should take the following steps.
First, it is desirable to do a trademark search to determine if anyone else is using your desired mark (YOUR MARK) or one similar such that confusion would be likely. This search should include the records of the Trademark Office, related trade journals, other publications, and the Internet in general (e.g., GOOGLE it!).
If nothing damaging is uncovered in such a search then you may want to proceed to register the word(s) of YOUR MARK and potentially any associated logo with the United States Patent and Trademark Office. In addition, eventually you will need to prove use of YOUR MARK in commerce with the desired goods or services in order for those YOUR MARK and logos to rise to the level of an enforceable trademark. That is, you need to be selling goods with the mark attached or services with the mark used prominently nearby.
The actual formal trademark application process is essentially two steps and may be done online. You need to provide:
- Details of YOUR MARK, how and if you have used this logo/name.
- Application fees, which can range from $275-$350 in fees to the government for a single class of goods. Some applications include multiple classes such as when you are selling T Shirts and
The application process includes drafting of an identification of goods and/or services to go with YOUR MARK - which is best done by a trademark attorney since it is submitted at the time of filing and usually cannot be expanded later. Also, after filing, the Trademark Office still needs to review the application and typically responds to the applicant with objections and/or requirements which need to be addressed - usually with the help of a Trademark attorney.
Once you make it through the process, and YOUR MARK is allowed, here are a few of the benefits that are associated with receiving a registration through the Trademark Office.
- There is a presumption that you are the owner of the YOUR MARK for the goods and services listed in the registration. In particular, the listing on the trademark registry provides constructive notice to the world that the mark belongs to you. Anyone who performs a trademark search should also uncover your mark which should reduce the likelihood that someone would try to apply for a mark similar to yours.
- You have the exclusive right to use YOUR MARK nationwide for the particular goods and/or services associated with the mark.
- You can potentially use YOUR MARK in other countries in the same way that you would be able to use it in the U.S. Your US trademark provides a priority date relative to a filing of trademark applications abroad if it is filed within six months of the US filing date.
- You can add the "R in a circle" “®” to YOUR MARK which puts others on notice that this is your registered trademark and they shouldn’t use it.
Written by: Victor A. Cardona