If you’re like most small business owners, it’s likely you’ll spend countless hours painstakingly coming up with one thing:
Your business name.
You might poll your family (or random internet strangers).
You might end up with a list of 100s of options.
Or you might just have ONE option that ultimately feels like the only option.
When you’re busy establishing a unique and memorable brand identity, there’s a lot of (internal) pressure to make it perfect.
Which is why, once you finally nail it, you’ll be sure to register it with the state so it’s locked down.
Except, it probably won’t come as a shock to learn the legal aspects of actually protecting your brand assets – like your name – are complex.
And registering your business name with the state is not the same as registering your trademark.
**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
Understanding business name registration
A business name is exactly that.
It’s just a name (albeit one which will likely be an integral part of your brand).
A business name is also known as a trade name or fictitious business name (DBA “doing business as”).
It’s the name under which you’ll conduct your business – it belongs on your storefront, business cards, website, and whatever other promotional materials you use.
Basically, your business name is how customers identify you in an otherwise crowded marketplace.
And you register your business name with your state for a variety of reasons. Because:
- Many states consider business registration a legal requirement.
- Registering your business boosts the appearance of professionalism.
- It protects against others using the same name in your local jurisdiction
But, unless your business name is also the name you choose to register as a trademark, you’re limited in how protected you are:
Registering your business name only prevents other businesses from using that same name within your state. Nothing is stopping businesses in the other 49 states from using the same name. The Secretary of State Offices aren’t set up to communicate with each other.
So, to protect your name nationwide (and make it easier to apply for protection it in other countries), you’ll need to pursue trademark registration.
Understanding trademark registration
Your business name may be just a name.
But your trademark is property.
A trademark is a unique identifier that allows your customers to know at a glance that the product/service they’re getting is coming from you.
Your trademark can take a lot of different forms, including:
- Word Marks (e.g., Apple)
- Logo Marks (e.g., The Golden Arches)
- Slogan Marks (e.g., “Just do it”)
- Sound Marks (e.g., The Intel Chime)
- Color Marks (e.g., Tiffany’s Robin Egg Blue)
And as the owner of a trademark, you have the right to prevent other businesses and individuals from infringing on your trademark rights.
Trademark registration gives you access to unmatched brand protection.
- You can enforce your exclusive rights to that registered mark across the US\
- You can use the powerful ® symbol to put potential infringers on notice of your registration
- You have the right to file a federal trademark infringement action
- You can obtain damages and attorney’s fees if your federal trademark infringement action is successful
- You will have an easier process registering your trademark internationally
- You’ve secured a valuable asset for your online business
What should you do if you want your business name and registered trademark to be the same?
First things first:
If you intend for your business name and trademark to be the same, it’s important to do a comprehensive search before you move forward with registering that name with the Secretary of State.
A comprehensive search looks beyond the USPTO’s Trademark Electronic Search System (TESS) and explores things like:
- Domain hosting sites
- Social media platforms
- Secretary of State filings
- Existing state trademark registrations
- And what’s beyond page one of Google search results
The goal is to examine the risks associated with the use and possible registration of your selected trademark.
You want to make sure no other business is using the exact same or similar mark in the exact same or similar way.
In other words, you’re checking for a likelihood of confusion between your mark and another mark that could leave a client/customer wondering if they’re dealing with your business or someone else’s.
But working with an attorney to run a comprehensive search means the attorney is also analyzing other relevant trademark issues, like:
-Is your proposed mark too descriptive?
-Is it geographically descriptive or misdescriptive?
-Does it fail to function as a trademark because it’s being used ornamentally?
(Plus all the other reasons an Examining Attorney could refuse registration of your mark.)
That’s why a comprehensive search is a gold-star business practice.
It not only increases the chance of your trademark reaching registration, but it also helps you to identify – and address – any other issues BEFORE you spend a pretty penny on filing fees.
Registering your business name is not the same as registering your trademark
Now you know:
Registering your business name with the state and registering it as a trademark are two totally different processes with very different outcomes.
- Business Name Registration: The main reason you register your business name is to comply with the legal requirements of your State.
It doesn’t grant exclusive rights to the name itself or prevent others from using a similar name for different goods or services or the exact same name in other states.
- Trademark Registration: Trademark registration ensures no one else can use a similar mark for related goods or services.
It offers national protection, encompassing your mark’s specific design, wording, etc.
If you own a small business, you will have to register your business name with your Secretary of State Office.
You can choose to apply for federal trademark registration and give your brand as much protection as possible.
Reach out if you’re ready to choose a business name only you have exclusive rights to.
Want to keep Uncomplicating Trademarks for yourself?
Get on the exclusive podcast list and start listening today.