Understanding the Process: How to Trademark Your Name

Are you ready to “trademark your name” and establish a strong brand identity? Before diving into the process, let’s explore what it truly means to secure a registered trademark for your business. You are looking for federal trademark protection so that your business entity can have exclusive rights for its brands in its products or in its services.

What is a Trademark?

Your business name, phrase, slogan, tagline, or product name serves as a trademark if it uniquely identifies your goods or services. It’s a crucial element in distinguishing your offerings in the market.

The Registration Process Unveiled

When you decide to “trademark your name,” it involves a comprehensive, entire process guided by legal expertise and scrutiny. Here’s a breakdown of the trademark application process:

1. Trademark Search: Your legal team conducts a thorough search to identify existing trademarks and other similar names related to your goods or services. This step is crucial to avoiding conflicts and potential legal issues down the line.
2. Due Diligence: Thorough research and analysis are performed, ensuring that your trademark aligns with legal requirements and industry standards.
3. United States Patent and Trademark Office (USPTO): Your trademark application undergoes rigorous examination by the USPTO, verifying its uniqueness and adherence to trademark laws.
4. Public Review: The trademark, after passing internal assessments, is presented for public review. This transparent process allows for any objections or challenges to be addressed.

The Trademark Search: the Essence of Due Diligence

While the goal is to successfully “trademark your name,” it’s essential to recognize that your business name may already be in use as a trademark by others. This emphasizes the need for due diligence in the form of comprehensive searches and legal expertise.

We at Verna Law, P.C., perform a trademark search for the trademark our clients give us – no matter if that mark is a common law trademark, trade name, domain name, or proposed brand name.  The standard character mark that our clients give us is compared to those already in the USPTO database – registered, applied for, live, or dead.  This search brings us results of other similar marks, an existing trademark, a registered mark, a service mark, that are similar to our clients’ marks.  Then, our opinion letter discusses the likelihood of confusion between the closest marks found in the trademark search results.

Why is this important?  The legal advice given in the opinion letter we draft gives our clients some assurances that the chosen trademark can go through the entire trademark registration process, become registered, and can be used in interstate commerce. The U.S. Patent and Trademark Office is taking a long time reviewing applications, so our clients need to know if it is a good idea to use the chosen trademark.

After that process, you can “trademark your name.”

The process, however, is important to understand what other marks exist in the marketplace for your goods/services.  So, while you want to “trademark your name,” your lawyers’ job is to avoid liability while filing that application for a trademark registration.

Yes, you can “trademark your name.”  Just remember it may already be in use as a trademark, which creates liability when that mark is not searched.

The Trademark Application

After consultation with our clients about the opinion letter, we will then file the trademark application through the USPTO website.

The opinion letter will state the International Class of goods or services that our client is selling, so we will use that in our application at the USPTO.  We will also upload the trademark specimen if the mark is in use.  There are filing fees at the USPTO and there are additional fees for applications that require multiple international classes.

At the time of tiling, a serial number will be issued to the trademark application.

The Filing Basis

The filing basis is the definition of the trademark status:  In use, having a bona fide intent to use the mark in interstate commerce, or other previous foreign trademark applications or trademark registrations.  An in-use filing basis means that the trademark is already in use in either interstate commerce or in commerce that Congress has the right to regulate – think of it as commercial use.  An intent-to-use filing basis means that the trademark applicant has a bona fide intent to use the mark in interstate commerce or in commerce that Congress has the right to regulate.  Another filing basis might be because the trademark has been applied for or registered in a foreign country or jurisdiction.

The Office Action

The USPTO will review your trademark application (by statute, this should be within three months of filing, but the USPTO has been slow and it takes eight or nine months to review an application).  After that, it will move to the next step of publication or the applicant will receive an Office Action from the USPTO examining attorney.  The Office Action states the legal reasons for the USPTO refusing to register the trademark in the trademark application.  The applicant (or the applicant’s attorney) will have to respond to the Office Action within three months.

Publication

The next step is publication, in which the trademark application is published in the USPTO’s Official Gazette.  The publication date is important because the publication period is 30 days.  Should no third party object to the trademark, then the mark will be registered if it is an in-use application, or the applicant will have to show use of the trademark in order to register the mark.  If the applicant has to show use of an intent-to-use trademark application, the applicant will incur additional fees.

Filing a Personal Name

Personal names can be trademarks, as long as those names are actually in use in commerce.  Remember that there is no absolute right to use your own name as a trademark. In fact, many of the most well-known and valuable trademarks stem from personal names. This question will be answered first in connection with a “surname”. Under U.S. trademark law, a Mark that is “primarily merely a surname” cannot be protected without proof that it has “acquired distinctiveness”. Generally, five factors will be considered to determine if acquired distinctiveness must be shown:

(1)Whether the surname is rare;
(2)Whether the term is the surname of anyone connected with the applicant;
(3)Whether the term has any recognized meaning other than as a surname;
(4)Whether it has the “look and feel” of a surname; and
(5)Whether the stylization of lettering is distinctive enough to create a separate commercial impression.

Essentially, if the purchasing public’s primary impression when encountering the Mark is that of a surname, and not a trademark, acquired distinctiveness will have to be proven. Unlike surnames, personal names (first names and first names used with last names) can act as trademarks without proof of secondary meaning because they are considered to be inherently distinctive. In addition, if you add two initials to a surname, it is probable that the commercial impression that will be conveyed by the Mark will be that of a personal name and not a surname. In the famous case of In re P.J. Fitzpatrick, Inc 95 U.S.P.Q.2d 1412 (TTAB 2010), the Trademark Trial and Appeal Board reversed a refusal to register the mark P.J. Fitzpatrick Inc. The Board held that the initials within the mark was enough to avoid the finding that the mark was “primarily merely a surname”. This is good news for those of us who are looking for a way to use their surname as a trademark.  The only caveat is that the personal name must be used in a manner that is perceived by purchasers as identifying the source of the goods and/or services.

Partnering with Verna Law, P.C.

At Verna Law, P.C., we focus on guiding businesses through the intricacies of trademark registration. Our experienced legal team ensures that your trademark journey is thorough, efficient, and minimizes potential liabilities.  We are a law firm focusing on intellectual property (patents, trademarks, and copyrights) and advertising law.

Why Choose Verna Law, P.C. for Trademarking Your Name?

• Expertise You Can Trust: With years of experience in trademark law, our team understands the nuances of the process, guiding you seamlessly from start to finish.
• Tailored Solutions: We recognize that every brand is unique. Our experts craft personalized strategies to meet your specific needs, ensuring comprehensive protection for your name.
• Efficiency and Precision: Time is of the essence when it comes to trademarking. We streamline the process, ensuring that your application moves smoothly through the legal channels.

How to Trademark Your Name with Verna Law, P.C.

1. Consultation: Schedule a consultation with our seasoned trademark attorneys to discuss your business goals and understand the best approach for your trademark application.
2. Comprehensive Search: We conduct a thorough trademark search to identify potential conflicts and ensure your chosen name is distinctive and registrable.
3. Application Preparation: Our team prepares a meticulous trademark application, addressing all legal requirements and maximizing the likelihood of approval.
4. Filing and Monitoring: We file your application promptly and monitor its progress, keeping you informed at every stage.
5. Protection Beyond Registration: Our commitment doesn’t end with registration. We provide ongoing support to protect your trademark rights and address any potential challenges.

Secure Your Brand Today – “Trademark My Name” with Verna Law, P.C.

Don’t leave your brand unprotected. Ensure its longevity and success by partnering with Verna Law, PC. Ready to take the first step? Contact us today to begin the journey of securing and trademarking your name.

Ready to Protect Your Brand? “Trademark Your Name” with Confidence!

Embark on the journey of securing your brand identity. Contact Verna Law, P.C. today at anthony@vernalaw.com and speak to trademark attorney Anthony M. Verna III, Esq., to initiate the process of “trademarking your name” with the assurance of legal diligence and expertise. Call our office at 914-908-6757.

Here is a video blog on the the importance of performing a trademark search: