Can You Trademark a Name?

Trademarks are one of the most important tools to protect intellectual property; at the same time, in a good many cases, this knowledge is confusing, especially when dealing with personal names or business names. This is why you might wonder “can you trademark a name” so that it may exclusively be yours when running a business or developing a brand. The answer, after all, is simple and complex: yes, you can trademark a name, but it comes with conditions and filing requirements.

In this article, we are going to delve deep into the world of trademarks in particular, and we are going to examine closely an area which is frequently misunderstood-name trademarking.

What is the possibility of trademarking a personal name, business name, or even a product name? What legality is involved, and are there any possible hurdles?

By the end of this article, you will have a good understanding of whether to trademark a name, and why and how to do so, and why it is an important consideration for a business or brand.

What is a Trademark?

A trademark is that form of intellectual property protection that grants legal rights over a brand identifier, including, but not limited to, a name, logo, slogan, or design.

The use of a trademark is essentially to enable distinguishing the goods or services of a business from others’ goods or services and to build trust and recognition among consumers.

The owner of a registered trademark has the exclusive right to use it in commerce within the jurisdiction it was registered-for example, within the U.S., the EU, or worldwide through international agreements.

What Can Be Trademarked?

Trademarks cover a wide range of intellectual property, including:

• Business names (e.g., Nike)
• Product names (e.g., Coca-Cola)
• Logos (e.g., the Apple logo)
• Slogans (e.g., “Just Do It”)
• Sounds (e.g., NBC’s three-tone chime)
• Colors (e.g., Tiffany’s blue)

This means that so long as the name exists within a certain ambit, it can be trademarked, where it subsequently becomes an identifier of the brand in terms of the products or services. But how about personal names or ordinary words? That’s where things go really tricky.

Can You Trademark a Personal Name?

A personal name actually can be trademarked, but it does not work the same way as simply registering a trademark for a unique business or product name.

Trademarking a personal name is achievable if the personal name is applied to commerce to identify a business or brand. However, it has some conditions that have to be met before that occurs.

Distinctiveness is Key

The most important factor when trademarking a personal name is distinctiveness. In trademark law, names (like other types of trademarks) are divided into four categories based on their distinctiveness:

1. Fanciful or Arbitrary Names: These are the most distinctive types of trademarks and are usually invented names (e.g., Google, Xerox). They have no meaning other than their association with a particular product or service.
2. Suggestive Names: These names suggest a quality or characteristic of the goods or services but don’t directly describe them (e.g., Netflix – a combination of “Internet” and “flicks” for movies).
3. Descriptive Names: Descriptive names describe a product or service directly (e.g., “Cold and Creamy” for ice cream). These names can only be trademarked if they acquire a secondary meaning, which means the public associates the name specifically with the company or brand.
4. Generic Names: Generic names are common terms for products or services (e.g., “Bicycle” for bicycles). Generic names cannot be trademarked.

When Can You Trademark a Personal Name?

In general, a personal name will have an easier shot at being trademarked if it fits into one of the first two categories: fanciful, arbitrary, or suggestive.

If the name is merely descriptive or generic, you’ll have an uphill fight for approval to trade mark it. But again, even with descriptive names-the kind that have acquired secondary meaning-are trademarkable.

For instance, names like “Oprah” and “Beyoncé” acquired this right through being in use for years, becoming well known in conjunction with the persons’ brands and offerings. Oprah is no longer a personal name-it is also a brand synonymous with media, entertainment, and much more.

Secondary Meaning

A common or generic name such as “John Smith” or “Mike’s Plumbing” will still serve as a trade mark if you can demonstrate that it has acquired a secondary meaning. Secondary meaning will mean that the mere mention of the name will bring to the minds of people your specific product or service.

For example, the common surname “McDonald’s” has, over time become so well known to be synonymous with a global fast-food empire. Now, it represents a brand, not a person.

Can You Trademark a Name of a Business?

Yes, you can trade mark a business name, and this is also one of the most common reasons for trade mark purposes.

A business name is an essential element of your brand identity and securing a trade mark prevents competitors from using a similar name which may cause confusion in customers.

What Are the Benefits of Trademarking a Business Name?

The benefits of trademark registration for your business name are numerous:

Exclusive Rights: A trade mark gives you the exclusive right to use your business name in connection with the goods or services you offer. No one else in your industry can legally use a similar name that might confuse customers.

Brand Protection: Trademarking your business name helps you protect your brand’s identity and reputation. It prevents others from piggybacking on your success or damaging your brand with inferior products or services.

Legal Recourse: If someone uses a similar name in a way that infringes on your service mark, you can take legal action to stop them.

Expansion Opportunities: A trade mark allows you to expand your business into new markets or product categories without worrying about others using your name.

Brand Value and Asset Creation: Trade marks are intangible assets that grow in value as your business expands. They can be licensed, franchised, or even sold, generating additional revenue. Well-known trade marks often become synonymous with the brand itself, adding substantial worth.

Global Expansion Opportunities: A registered trademark can open doors for business growth and partnerships internationally. With global trade mark systems like the Madrid Protocol, you can extend your brand protection into new markets more easily.

Is Your Business Name Eligible for Trademarking?

Not all business names can be trademarked. To be eligible, your business name must meet several criteria:

• Distinctiveness: Like personal names, business names must be distinctive. Generic or overly descriptive names are unlikely to be approved for trademark protection.
• Non-Confusing: Your business name must not be confusingly similar to an existing trademark. For example, if a company called “Starbucks” already exists, you cannot trademark the name “Starbux” for a coffee shop, as it would likely confuse customers.
• Used in Commerce: To be eligible for a trademark, your business name must be used in commerce. This means that you must be actively using the name to sell goods or services. If you’re simply reserving the name for future use, you won’t be able to register it as a trademark just yet.

Can You Trademark a Product Name?

Product names, like business names, can also be trademarked. In fact, many companies trademark both their business name and the names of their individual products.

Why Trademark a Product Name?

Trademarking a product name offers similar benefits to trade marking a company name, including brand protection, exclusive rights, and legal recourse. It’s especially important to trade mark your product name if:

• The product is a major part of your business or a cornerstone of your brand.
• The product name is distinctive and central to your marketing.
• You want to protect the product name from being used by competitors in a way that might cause customer confusion.

Examples of Trademarked Product Names

Many famous product names are also trade marks. For example:

• iPhone (Apple’s smartphone)
• Coca-Cola (Coca-Cola’s soft drink)
• Big Mac (McDonald’s burger)

In each of these cases, the product name is a registered trademark that is protected under trademark law.

How Can You Trademark a Name?

Now that we’ve established that names can indeed be trademarked, let’s walk through the entire process of trademarking a name, whether it’s a personal name, business name, or product name.

Step 1: Conduct a Trademark Search

Before you file for a trade mark, it’s crucial to conduct a comprehensive name search to ensure no one else is already using the name you want to trade mark. This involves searching the United States Patent and Trademark Office (USPTO) database (or the equivalent in your country) to see if the name is already registered.

You can conduct the search yourself, or you can hire an intellectual property attorney to do it for you. An attorney can help you avoid potential pitfalls and ensure that your application is as strong as possible.

Step 2: File a Trademark Application

Once you’ve completed your search and determined that your name is available, you can file a trademark application with the USPTO. The application will ask for the following information:

• The name you want to trade mark.
• The goods or services the name will represent.
• The date you first used the name in commerce.
• A representation of how the name is used (e.g., on products, in advertising, etc.).

You will also need to specify the class of goods or services for which you’re seeking trade mark protection. The USPTO divides goods and services into different classes, and your trade mark will only apply to the classes you specify.

For example, if you trade mark a name for use in connection with clothing (Class 25), someone else could still use the same name for a different class, like software (Class 9).

Step 3: Wait for Examination and Approval

After submitting your application, it will be reviewed by a trademark examiner to ensure it meets all requirements. This process can take several months.

If the examiner identifies issues, such as similarity with an existing trade mark, you may receive an Office Action outlining the objections. You’ll have the opportunity to respond and address the concerns.

Step 4: Publication for Opposition

If your trademark clears the examination stage, it will be published in the official trademark gazette, allowing the public to oppose the registration if they believe it infringes on their rights.

If no opposition is filed within a specified period (usually 30 days), your service mark moves forward to registration.

Step 5: Receive Your Trademark Registration Certificate

Once approved, you’ll receive a Federal trademark registration certificate. In the U.S., trademarks must be renewed every 10 years, with a mandatory maintenance filing between the 5th and 6th years.

Limitations of a Trademark

While trademarks provide valuable protection, they come with certain limitations that businesses should consider.

Territorial Limitations

Trademarks are only protected in the jurisdictions where they are registered. For example, a U.S. trademark does not automatically grant legal protection in other countries unless registered internationally through agreements like the Madrid Protocol.

Industry-Specific Protection

Trademark protection applies only to the goods or services within the specified class. This means another business in an unrelated industry could legally use the same name if it operates in a different class of goods or services.

Ongoing Maintenance Requirements

There must also be commercial use of the mark by a registered trademark owner in order to sustain his rights. Trademarks generally have to be renewed every 10 years, but during some periods evidence of use has to be provided. If it is not renewed or demonstrated to be used, rights are lost.

Protection Against Similar Marks

Although trademarks prevent identical or confusingly similar marks, they do not put a stop on all forms of imitation. Sometimes, minor variations in the spelling or design are not deemed infringement.

High Costs and Time Investment

Trademark registration can be a very time-consuming and very expensive exercise, especially regarding international registration. You might also have to fork out lawyers’ fees when enforcing your trademark against infringers.

What’s Next?

Trademarking a business name is an essential step for business owners to protect their brand and prevent intellectual property theft.

A trademark provides legal grounds to act against anyone using your mark without permission, minimising the likelihood of confusion with other brands. It secures your business name as an intellectual property asset, strengthening your association with products or services in the market.

However, the process involves more than just filing fees—it requires an investment of time to navigate registration and potential challenges.

Consulting an intellectual property lawyer is often advisable to ensure your application is thorough and to handle any disputes. Unlike copyright, which protects creative works, trademarks safeguard names, logos, and symbols tied to a company business. Even famous names can encounter challenges if not properly registered, as the legal landscape is complex.

To prevent infringement, it’s critical to monitor the market for unauthorised use. Bytescare offers comprehensive brand solutions for trademark infringement, enhancing your reputation through expert monitoring and strategic enforcement.

Book a demo to see firsthand how we can protect your trademark. This ensures your single-letter brand remains distinctive and secure in the ever-evolving digital field.

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