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Welcome to Trademark Law Radio, my name is Trademark Attorney Enrico Schaefer. Today, we are going to talk about how to trademark a name, how to trademark a logo, how to trademark an image, how to trademark a shape, how to trademark. These are all issues that new business owners face every single day. These are all issues that companies who are trying to extend their brands or launch new products and services face every single day, and it is something that is extremely challenging.
The difficulty of trademark registration - trademarking your name – involves the creative process of trying to think of a name, a brand, a logo, an image that you can use in order to extend your reach into the consumer market. Moreover, have that consumer market respond to you in a way where they know who you are: where your brand is familiar.
So, the first things you need to think about when you are trying to determine how to trademark a name is what is the process by which you are going to get candidates for names: how are you going to create that list of names that you are going to consider?
The next thing you have to understand is who are the decision makers. If you have a number of people in your company that you need to involve in the process of coming up with a trademark, name or brand that is available for trademark, you need to get that internal process figured out on the front end. What you will find is that you, oftentimes, spend a lot of time trying to think of a name to trademark, and then you quickly realize that you can spin in circles for hours and hours and hours without really ever getting anywhere, so you need a process. If you are going to try and figure out how to trademark a name, the first thing you have to do is figure out how you are going to make the decision on which are the candidates that you are going to truly vet, because there’s really a couple phases here to the trademark registration and branding process.
The first step is figuring out how you are going to go through the process, and then once you get your potential names in place, then you need to vet those names to figure out which ones truly are a candidate for your trademark, for your logo, for your slogan, for your image, for your shape. And that process involves involving a trademark registration attorney who can do a trademark clearance for you. So, let’s say, for instance, you come up with a great list of names. There’s three really solid names that you’re going to use as a potential trademark. Now you have to see whether or not those names are available from domain name point of view, from an internet use point of view and from a trademark point of view, and the trademark point of view means that you have to have a trademark attorney go out and do a trademark clearance or availability search in order to see if someone else has already used the name that you’re thinking about as a trademark in the past in goods and services which may be similar to yours. So, it could be that you come up with a great name, but it could be also that someone else already thought of that name.
The next thing you want to think about in terms of how to trademark a name is that once you get those candidates, once you get your trademark lawyer involved and takes you through a trademark clearance, how are you going to roll out that brand? How are you going to use it in commerce? Now, there’s a very important point here that you need to understand. You can actually put a placeholder down for your name before you use the name in commerce. Keep in mind, common law trademarks exist the moment you start to sell services or goods in commerce, even if you haven’t registered your name as a trademark. But what if you come up with great name and it’s going to take you six months to roll out that good or that service into the market. You don’t want to lose your right to use the name. So, you can actually go through the trademark registration process on an intent to use basis. Meaning that you are telling the trademark office that you are registering your trademark and intend to use this as my brand in the future and, therefore, I win, if there should ever be a contest between me and someone else during this next period. So, you can file an intent to use trademark in order to put your placeholder down to make sure no one else in the meantime gets to use that name.
So, how to trademark a name involves several steps, get your process down, come up with candidates, have those trademarks vetted by trademark attorney, do a trademark clearance, get a trademark opinion letter, all these things are things you need to be thinking about in order to get your trademark protected in commerce, make sure that your brand is protected moving forward.
My name is Enrico Schaefer. I’m a trademark attorney with Traverse Legal, and that’s all for today. Have a great one!
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