As you build your business and your reputation in the marketplace, your brand becomes an increasingly valuable asset to drive sales. The exclusive right to use the name or logo associated with your business has obvious value.
Registering your trademark rights is an important step to maximize the benefit of your investment in your reputation and preventing others from capitalizing on it.
How to Choose the Right Business Name to Register
Before you can register a trademark, you’ll have to choose one, or more, words or images to associate your new business with.
What you choose as your trademark is an important business decision with implications for your commercial success and reputation. You will want to choose a trademark that is commercially effective, able to be registered and able to be protected.
Trademarks have varying levels of strength. The levels of strength range from weaker, less distinctive, to highly distinctive.
This determines the ease with which an exclusive right to use can be enforced and a reputation can be attached to the mark.
Weak marks may be descriptive and difficult to associate with a particular source of goods and services.
While the strongest marks tend to be abstract or fanciful. Stronger marks are often inventive words and “not words” that are commonly present in the industry.
Consider Google, for example, is a trademark that has been valued at a whopping $44.3 billion. The word “Google”, has become an actual word because of the company success. But, at the time the company name was first adopted, it represented a made-up word, was unique, and able to distinguish the search engine from others.
Once you have a trademark in mind, an important step to conduct an availability search.
What is a Trademark Availability Search?
An availability search is an investigation into any existing use of the company name you’re considering using. Or a pending or registered company name so similar that it can be confused with your own.
Conducting a search before investing in your business name can save you the time and expense of filing for an un-registerable mark, and the legal consequences of adopting a mark already in use.
You can conduct a preliminary search yourself, and on that basis narrow down your list of potential marks. Or, for a more thorough consideration of the availability of your proposed business name, you may want to hire an experienced professional.
A trademark agent will conduct a search of registered and unregistered business names to provide you with an availability opinion. The agent will be able to apply their professional experience before the Trademarks Office to determine the likelihood that your company name will be allowed in view of the law and the marks currently on the Register or in use and also advice you of the level of risk of conflicts with third parties.
How to Register a Trademark for a Company Name in the United States
- First, search the Trademark Electronic Search System database for existing trademarks
- After, apply at the U.S Patent and Trademark Office online
- Then provide additional business information like category of services and date of first use for desired company name
- Next, pay the fee online that ranges from $225 to $400
- Finally, waiting period should be no more than 90 days
The first thing you need to do is make sure the company name you want to register hasn’t been claimed by anyone else.
You can check that by searching the Trademark Electronic Search System database. Remember that you don’t want to register a company name with any web domain extension because someone can copy register the same company name with a different extension.
Once you confirm the company name is available you need to register the company name. In the United States the process to register a company name is straightforward. Go to the U.S Patent and Trademark Office website. There has been a slight application fee increase as of 2019 that ranges from $225 to $400.
You will need to provide information about your business and why you’re seeking a trademark. As long as the name you’re looking to register is not similar to another company, where it can cause confusion, you should be approved.
How to Register a Trademark for a Company Name in Canada
In most jurisdictions, trademarks can be categorized into two broad classes: registered and unregistered. Unregistered, or non-registered, company names are governed by and can be protected under common law in many countries.
For new businesses, unregistered marks may initially appear to be an attractive alternative to paying the professional and filing fees associated with registering a trademark. However, the value of a registered mark relative to an unregistered mark is significant and should not be overlooked.
In short, registered marks are easier to establish a right to and protect. Whereas there is a significant burden associated with the protection of unregistered marks because the need to prove the mark’s validity and the scope of the asserted rights.
At the end of the day, the best way to protect your brand is to register a trademark with the Intellectual Property Office in the jurisdictions in which you conduct business.
For example, to obtain a Canadian trademark registration, you must apply to the Canadian Intellectual Property Office (CIPO). When you apply for a registered trademark, you will be expected to select the “classes” of goods and services in association with which your mark will be used.
Effective June 17, 2019, in Canada, each category in which you wish to claim an exclusive right to the use of your mark will add $100 to the cost of your application (with the first class incurring a fee of $330).
What is the Application Review Process
Once an application has been filed, an examiner will review your application and conduct a search on the Register for any marks that are considered confusingly similar. If the examiner notes any deficiencies in the application, or uncovers a confusingly similar mark during the search, an examiner’s report will issue.
Then, you must overcome the objection to registration such as by amending the application or submitting arguments that the objection should be withdrawn.
If the application is acceptable, it will be approved and then advertised in the Canadian Trademarks Journal, a weekly online publication of the Canadian Intellectual Property Office. The purpose of advertisement is to alert the owners of other trademarks that the advertised mark is proceeding to registration.
These third parties then have the opportunity to oppose your application at any time during the two months following the advertisement. If no one successfully opposes the application, your trademark will be allowed and permitted to proceed to registration.
This entire process typically takes approximately 18 to 24 months in the absence of any objections from the examiner or oppositions to the advertised mark. Once your mark registers, the registration is renewable every 10 years (effective June 17, 2019), simply by paying a renewal fee.
It is important, however, to use the company name as registered to maintain your registration. Otherwise your registration could become vulnerable to cancellation proceedings based on non-use.
