Does a soon-to-be corporate name or DBA protect my desired name from use by others under trademark law or do we need to take additional steps?
No, the registration of your corporation name or state DBA registered pseudonym does not prevent others from using your name in conjunction with the sale of goods or services. A domain name would only let the registrant use the name as a web address to point others to particular web content but in and of itself does not prevent another from registering the same term with the Trademark Office.
So having a domain name or business name does not mean that you have a trademark registration. In order to reserve a trademark with the Trademark Office you should take the following steps.
First, it is desirable to do a trademark search to determine if anyone else is using your desired name or one similar such that confusion would be likely. This search should include the records of the Trademark Office, related trade journals, other publications, and the Internet in general (e.g., GOOGLE it! ).
If nothing damaging is uncovered in such a search then you may want to proceed to register the word(s) of your desired trademark and potentially any associated logo with the United States Patent and Trademark Office. In addition, eventually you will need to prove use of your mark (i.e., your domain, business names and logos) in commerce with the desired goods or services in order for those names and logos to rise to the level of trademarks. The actual formal trademark application process is essentially two steps and may be done online.
- The online application form includes details of the business name and/or logo design, how and where you have used this logo/name.
- Application fees, which can range from $275-$350 in fees to the government where is single class of goods. Some applications include multiple classes.
The application process includes drafting of an identification of goods and/or services to go with the desired name and/or logo - which is best done by a trademark attorney since it is a one-time thing and cannot be added to later usually. Also, after filing, the Trademark Office still needs to review the application and typically responds to the applicant with objections and/or requirements which need to be addressed - usually with the help of a Trademark attorney.
If you choose to register, here are a few of the benefits that are associated with receiving a registration through the Trademark Office.
- There is a presumption that you are the owner of the mark. In particular, the listing on the trademark registry provides constructive notice to the world that the mark belongs to you. Anyone who performs a trademark search should also uncover your mark which should reduce the likelihood that someone would try to apply for a mark similar to yours.
- You have the exclusive right to use the mark nationwide for the particular goods and/or services associated with the mark.
- You can potentially use the mark in other countries in the same way that you would be able to use it in the U.S. Your US trademark provides a priority date relative to a filing of trademark applications abroad if it is filed within six months of the US filing date.
- You can add the "R in a circle" “®” to your logo which puts others on notice that this is your registered trademark.