Trade mark the Name of a Business: Our guide to Protecting Brands

Want to trade mark the name of a business? Our quick guide provides everything you need to know

Business names are often a company's most important brand. This guide provides an overview of what you need to know to trade mark and protect the name of a business

Words by Dr Martin Douglas Hendry

The name of your business is one of the most important assets that your company holds. That's why most businesses (when they reach a certain size) look to trade mark their business name to protect it. In the guide below we provide answers to a number of common questions that relate to trade marking a business name.

What is a trade mark?

First things first, what is a trade mark? A trade mark ("trademark" in the US) is a registered right that protects brands.

Recognisable brands can take many forms: whether it's a name (e.g. Coca-Cola), a logo (e.g. Nike's "swoosh"), and even things like colours (e.g. Cadbury's "Purple").

Trade marks are jurisdictional - meaning that they have to be registered in the countries where the brand is to be protected.

Trade marks are also based on classifications, meaning that a registrant outlines the goods and services that the brand will protect - allowing other brands to use a similar mark for entirely different goods.

Ultimately, trade marks provide a monopoly over a brand's use (we'll go into this more in the next section).

Each registration lasts for 10 years, and in theory, can be renewed indefinitely if maintained correctly.

For this reason, trade marks are seen by many to be the most important intellectual property right - and something that offers a lot to businesses by protecting its distinctiveness.

But, why trade mark the name of a business, specifically?

Why trade mark the name of a business?

As mentioned above, business names tend to be the most important brands that companies own. Whilst it is likely that you may have product or service brands which are also a focus of reputation and goodwill - these typically pale in significance when compared to the company name itself. Think of "Ben and Jerry's" and compare this to "Phish Food" - one is clearly more valuable to the company than the other, right?

A lot of business owners make the mistake of thinking that when they register their company with Companies House that this secures their brand and stops other people from using it. This is false. Instead, a trade mark application needs to be made at the relevant intellectual property office (IPO) to secure the trade mark and protect the brand.

Securing it correctly as a trade mark (both in classifications you are set to use, as well as key jurisdictions) means that your business name can lay claim to a psychological terrain in the marketplace - which others are unable to get close to.

What this means is that certain associations as it relates to reputation and the attractiveness of a brand in the minds of the buying public are what's at stake. A strong brand which stands out in the marketplace and no one else can approach is incredibly valuable, as a result, an expertly tailored trade mark is a key business asset. More on that in the next section.

What protection does a trade mark offer a business name?

Once you have received confirmation that your trade mark has been registered, you are easily able to enforce your rights over that brand upon those who use similar or identical brands in the marketplace.

This protection is much more easily deployed than if you sought to enforce your brand without having a trade mark. This is achieved via the tort law of "passing off" - which would require you to provide a deep chronology as it relates to the use of the brand and the development of its reputation in the buying public. Even so, a passing off claim, in the best-case scenario, would only provide you with the ability to continue to use the brand in a limited way.

In comparison, a trade mark when registered gives you monopoly rights over that brand and business name and the ability to enforce against those who come too close to its look and feel. For businesses that look to stand out in their marketplace, a trade mark protects their business' unique identity and competitive edge.

How do you check if a business name is trade marked?

There are three basic steps you can undertake to know whether a business name is trade marked.

Number 1: Is someone else using the brand with the ® symbol?

The first is to search for others using the name and see whether they declare it as a trade mark. You can usually tell if this is the case because they will display the registered trade mark symbol "®" after the mark in question. Legally this can only be used with a registered trade mark.

Note that if a business uses the "TM" instead, this could be because the business is "unofficially" claiming this as a trade mark, or it is in the application process of being registered.

Number 2: Is the brand already registered on the trade mark registry?

You can also take a look at the trade mark registry to see if someone else has registered the mark or something close. Note: you will not be as good at this as a trained professional, as you will both have a bias toward your brand and not know the specific legal boundaries. Consider this something that might alert you to any red flags - but not one that gives you the greenlight!

Number 3: Get a professional clearance search completed by a trade mark specialist

Trade mark professionals (doesn't have to be us!) will offer a service known as trade mark clearance, which constitutes an expert search and analysis of the relevant trade mark registry in line with specific trade mark laws.

A professional clearance search will let you know 1) whether or not your business name can be registered as a trade mark (some marks are allowed and others are not, for various reasons) and 2) whether there are any marks that have already been registered that would cause a problem.

These searches typically range in price from £600-£2000, depending on the number of classifications that need to be searched - but provide a sense of certainty that the mark will be successfully registered the first time.

How to trade mark the name of a business: 6 key steps

Broadly speaking there are six steps that need to be undertaken in order to register a trade mark.

They are as follows:

Find out whether the business name can be trade marked - there are certain rules around descriptive, laudable and offensive brands (amongst others) that can limit the possibility of registering a business name as a trade mark. Where this is the case a trade mark specialist can help you identify what would be the next best possible branding choice.
Identify whether others out there have pre-existing marks that might cause you an issue. The best way to do this is to have an intellectual property professional undertake a full clearance search for you.
Prepare your trade mark specification (this details how the mark is to be used and not used, now and in the immediate future). A carefully tailored trade mark specification can ensure that you have the best possible coverage without falling foul of pre-existing marks and other pitfalls.
Submit your application.
After ~3-4 months, you will receive confirmation that your trade mark has been registered successfully (note, that once confirmed, protection is back dated from the point of registration.
Renew your trade mark for a nominal fee every 10 years to maintain protection in the long term.

Things to consider when trade marking the name of your business

There are four main things that you need to consider when registering your business name as a trade mark. This is not an exhaustive list and we recommend that you speak to trad emark specialists to cover all of the bases.

Descriptive business names - if the name of your business describes what it does, this may not be allowed to be used as a trade mark ("London Hire Cars")
Laudable terms - if the name of your business uses laudable terms, this may not be allowed to be used as a trade mark ("The Best Supermarket")
Moral issues - if your business name uses terms which may be morally challenging to the public - this may not be allowed to be used as a trade mark
Identical or similar marks - as mentioned above, it is very important to make sure that you do not fall foul of existing marks within the registry, a trade mark professional will be able to let you know the risk of this happening and help you minimize it.

Again, trade mark professionals are extremely well versed in what constitutes a red flag in respect of trade marks and we recommend that you speak to trade mark professionals (whether it is us or otherwise) to be absolutely sure before you commit to registering your business name as a trade mark.

How much does it cost to trade mark the name of your business?

The cost of a trade mark, from clearance to final registration always varies depending on the number of classifications you register the trade mark in and the geographic scope of coverage you are trying to achieve.

Typically for a UK trade mark in 1-4 classes, Virtuoso Legal would charge between £800-£2500 - with a scaling fee for more classes (requiring more time spent by the expert on searches, and more time preparing the trade mark specification).

Individual no-obligation quotes are given prior to registration, based on the unique commercial requirements of each business.

Theoretically, it is cheaper to self-file as this avoids paying the fees of specialists, such as ourselves, and only paying disbursements to the IPO. However, in practice, this is rarely cheaper in the long run as several negative scenarios typically arise, including but not limited to:

The trade mark being refused outright and the registration fee being lost
The trade mark being opposed by an existing mark, perhaps also resulting in an infringement claim - costing business owners attention, time and money
The trade mark being a flawed asset, with the lack of a tailored specification granting the trade mark owner a lack of meaningful brand protection and distinctiveness in the mind of the buying public

Should you get professional help when trade marking the name of your business?

It is important to remember that only a trade mark specialist knows exactly where the red lines are, and through their experience and expertise are best placed to help you secure the best possible asset - and avoid any elephant traps that others fall into.

For the best possible foundation for your brand, it is best to see your business name trade mark as an asset - and invest in doing it properly to get the most out of it in the long run.

We can help!

If you would like to speak to our team about trade marking your business name and receive a no-obligation quote, click the button below to contact us and begin the process.

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Trade mark the name of a business: What you need to know to protect your brand