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Trademark the name of a business: what you need to know

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Brand protection

Want to trademark 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 the name of a business.

Disclaimer: This FAQ should not be construed as legal advice on any specific facts. The contents are intended for general informational purposes only. You are urged to consult your own solicitor on any specific legal questions you may have.

 

Picture of a sign on a shop that says open. Demonstrates "trademark the name of a business"

Photo by Mike Petrucci on Unsplash

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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 trademark their business name. In the guide below we provide answers to a number of common questions that relate to trademarking a business name.

 

What is a trademark?

 

First things first, what is a trademark? A trademark ("trade mark" in the UK) 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").

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

Trademarks 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, trademarks are seen by many to be the most important intellectual property right - and something that offers a lot to businesses.

But, why trademark the name of a business, specifically?

 

Why trademark 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 trademark application needs to be made at the relevant intellectual property office (IPO) to secure the trademark.

Securing it correctly as a trademark (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 trademark is a key business asset. More on that in the next section.

 

What protection does a trademark offer a business name?

 

Once you have received confirmation that your trademark 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 trademark 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 trademark protects their business' unique identity and competitive edge.

 

How do you check if a business name is trademarked?

 

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

 

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 trademark. You can usually tell if this is the case because they will display the registered trademark symbol "®" after the mark in question. Legally this can only be used with a registered trademark.

Note that if a business uses the "TM" instead, this could be because the business is "unofficially" claiming this as a trademark, 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 trademark specialist

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

A professional clearance search will let you know 1) whether or not your business name can be registered as a trademark (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 trademark 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:

  1. Find out whether the business name can be trademarked - there are certain rules around descriptive, laudable and offensive brands (amongst others) that can limit the possibility of registering a business name as a trademark. Where this is the case a trademark specialist can help you identify what would be the next best possible branding choice.
  2. 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.
  3. Prepare your trademark specification (this details how the mark is to be used and not used, now and in the immediate future). A carefully tailored trademark specification can ensure that you have the best possible coverage without falling foul of pre-existing marks and other pitfalls.
  4. Submit your application.
  5. After ~3-4 months, you will receive confirmation that your trademark has been registered successfully (note, that once confirmed, protection is back dated from the point of registration.
  6. Renew your trademark for a nominal fee every 10 years to maintain protection in the long term.   

 

Things to consider when trademarking the name of your business

 

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

  1. Descriptive business names - if the name of your business describes what it does, this may not be allowed to be used as a trademark ("London Hire Cars")
  2. Laudable terms - if the name of your business uses laudable terms, this may not be allowed to be used as a trademark ("The Best Supermarket")
  3. 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 trademark
  4. 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 trademark professional will be able to let you know the risk of this happening and help you minimize it.

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

 

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

 

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

Typically for a UK trademark 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 trademark 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:

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

 

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

 

It is important to remember that only a trademark 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 trademark 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 trademarking your business name and receive a no-obligation quote, click the button below to contact us and begin the process.

 

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ABOUT VIRTUOSO LEGAL

Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique. The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.

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