Advice on protecting a business name in the US


4

There is plenty of material here on when to incorporate in the US for tax or other business reasons, for example:

but I couldn't find anything on the site that deals with my specific question, which is more around branding.

Part of establishing a brand is basically land-grab - getting the domain, registering the company name, registering trademarks, etc. In the UK where I am currently working, registering a company goes a little way towards establishing your brand, as there is one registration authority for England and Wales - once you've got a company name, no one else can use it (and it's pretty cheap to set up a company here).

Is this also the case in the US? And if so, what is easiest way of getting your company name registered? (I'm guessing it depends on which state you go for, but some general guidance would be much appreciated).

By way of background, I'm asking this question because in my previous start-up, I went through the process of applying for a US trademark, and it was a pretty expensive business with lawyers fees, etc. Perhaps things have changed?

Thanks in advance.

Incorporation Branding Trademark

asked Apr 8 '10 at 19:04
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Steve Wilkinson
2,744 points

3 Answers


3

While I might not completely answer your question, I can share with you the experience we are currently going through.

One of the routes we are currently researching to protect our trademark is through the World Intellectual Property Organization (wipo.int). We are currently based in the UK but want to protect our trademark abroad, much like you.

One cool thing we found is the Madrid system for the International Registration of Marks. See Here Also, there is a fee calculator on the website that may be of use to you.

Basically, you select which names you want to register, how many classes you want to register them in, and finally which countries you want them protected in. It will then give you an estimated fee for what you queried. My understanding is that you pay full price for the first name + class, then reduced rates for each subsequent TM in the specified classes + countries.

Finally, for more info about U.S. trademarks and to see if the trademark exists in the U.S., you can search here. Unfortunately, as far as deciding which classes you actually need, you should probably get a lawyer. Also, he/she can make sure that the application itself is correct and speedily executed. YAY Lawyers!!!

Not sure if this helps, but I hope it does!

-Nick

answered Apr 8 '10 at 21:39
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Nbeecroft
515 points
  • Nick - many thanks for this - really big help. I've used the fee calculator and it seems that things aren't as bad as I thought. I have done this in the UK and in the US before; the UK was next to trivial and very cheap, the US was the reverse. Be interested in swapping war stories some more on this if you have time - my email is in my profile if you want to hook up. Many thanks again - Steve. – Steve Wilkinson 9 years ago

1

The US is a federation and the tenth amendment says "The powers not delegated to the United States by the Constitution, nor prohibited by it to the States, are reserved to the States respectively, or to the people." One of those powers is incorporation. Incorporation under some name in one state gives you no branding rights in the other 49, just like incorporation in the UK give you no rights in, say, China.

Soooo, claiming and registering a trademark is the way to go. The trademark isn't for your company, it's for a product or service ("used in interstate commerce"), and unless you are say, Toyota, it's generally limited to one (or a few) product categories. One person might trademark Acme razor blades and another Acme software. You can buy a book on Amazon or just Google around for advice and DIY for about $400 in USPTO fees. You have to respond to the USPTO attorneys and some attorneys don't really like dealing with folks outside of their priesthood. But my USPTO attorney was very nice (thanks, Mary C.!). So there's an existance proof: I registered Taloma.

If you hire an attorney you get to see what attorney's do best, which is charge you lots of money.

Oh one more thing: grab a handful of domain names (.com, .org, and .net etc.) after you've picked a mark that you think is registerable but before you submit the application.

answered Apr 8 '10 at 22:17
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Woz2
11 points
  • Thanks for the feedback & advice Woz2. I've got my domain names, but wasn't sure where to go next. Appreciate the clarification on the states company structure and am encouraged by your experience. I'll look out for Mary C. :-). Cheers - Steve. – Steve Wilkinson 9 years ago

1

  1. In the U.S., the "land grab" operates state-by-state. If the name you want to use is not identical, or confusingly similar, to an existing name registered in that state, you can register it as the name of your new company. Subject to point 2 below, that is the company name you would use on contracts, in advertisements, etc.
  2. You can register a "fictitious business name" (also called a "DBA" for "doing business as"), if you wish, and proceed to use the FBN in your business dealings. (Please see When should I apply for my DBA? ) The FBN does not, however, do much to prevent others from using the name.
  3. As you noted, federal trademark or service mark registration is where the protection can be found (please see Trademark Protection in One Easy Lesson ). I don't know how feasible it is to do a registration on your own, without a lawyer. (Although I'm a lawyer, I don't do trademark registrations - I refer that business to a specialist who does it faster, better, and less expensively than I could.) You will need to decide how important a registration is and how much you are willing to pay for it.

Disclaimer: This post does not constitute legal advice and does not establish an attorney-client relationship.

answered Apr 9 '10 at 01:03
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Dana Shultz
6,015 points
  • Thanks Dana - appreciate the non-attorney-client input ;-) and the links to your site - I have been there before and it seems you've got some great material up there. I presume you use it also as a marketing tool to generate leads, I can imagine it is very effective. Given that cash is in short supply, I will see what I can do myself, but recognise that I may have to get a lawyer in the end. Thanks again for your time. – Steve Wilkinson 9 years ago

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