When you apply to be licensed as a corporation or LLC, the Secretary of State’s Office will confirm that your business’s proposed name is not already in use in your state. State laws vary about how different similar names of businesses can be, though they should be distinguishable. If it is too similar, then the license could be denied. If you are approved, the name of your business is protected under state law. It is critical to remember that although another LLC or corporation will be prohibited from using your business’s name, a sole proprietorship or partnership still may be able to use it. The name may also be taken by businesses in other states. As a business owner, you may be satisfied with the protection of your brand at the state-level, but if you are concerned that you may have issues with businesses out of state displaying the same name, then you should look into further protection. The Kazi Law Firm, PLLC can explain the benefits of having these protections in place and if you decide to protect your business name or brand across the United States, a federal trademark will be the most beneficial.
A trademark is a phrase, word, logo, design, or symbol (or any combination thereof) that distinguishes a business over their competitors. Trademarks essentially act as a business’ identity. The inherent purpose of trademark law is to prevent consumer confusion and protect the business owner’s intellectual property. There are of course limits on what can serve as a mark. Generic names, common everyday phrases, phrases used for non-business purposes, etc. cannot be trademarked. Trademarks are granted federally by the US Patent and Trademark Office (USPTO) and the protection extends from the federal to the state level as well. When a trademark is granted, the owner has the exclusive rights to its use and can prevent anyone else from stealing it or using it in their course of business. You may choose to not trademark your business name, but it is prudent to conduct a search on the USPTO database to ensure that nobody else has filed a trademark for the same business name (in the same industry) in order to prevent trademark infringement.
Please note: The trademark process generally takes 6 to 9 months from the initial filing
date with the USPTO.
1. Search – If you have decided to file for a federal trademark, it is not only prudent, but vital that you conduct a thorough search. This search does not consist of a broad Google search, but is an elaborate and extensive search into the proposed mark and variations of it to dictate whether it is already used in commerce.
a. If your proposed mark is shown to conflict with another and is likely to be denied, the Kazi Law Firm will assist you in refining your mark to be stronger and more distinctive.
2. Examination – This step takes the bulk of time in the trademark process and usually takes 3 to 4 months. During this critical review, the USPTO examining attorney determines whether the likelihood of confusion exists with another registered trademark. The attorney is looking for additional issues, such as whether corrections are necessary on the application, whether the mark is largely descriptive, geographic, common, etc.
a. If the examining attorney finds no issues with the application and proposed mark, you will be approved for publication.
b. However, if there is a problem notated on the application, you will be issued a Non-Final Office Action, to which you must respond.
3. Non-Final Office Action – You must respond within 6 months of receipt. It is in your best interest to respond as soon as possible, as to not further delay the trademark process.
a. Once you submit your response, the examining attorney will review the new information, which usually takes about 3 to 4 weeks. He/she will then determine whether you will be published.
4. Publication – Once you are approved for publication, your proposed mark will be published for opposition for 30 days. Essentially, this publication puts the world on notice that if an owner of another mark feels your mark will damage their existing mark, this is their opportunity to formally object by filing an opposition proceeding.
a. If no one files an opposition proceeding, your mark will be registered.
5. Registration – FINAL step in the process. You have officially registered your trademark.
a. Now it is your responsibility to maintain your mark by renewing your registration as required by law.
i. Trademarks are generally valid for 10 years
ii. Must be renewed between the 9th and 10th year following your registration date and each successive 10 year period thereafter
Please contact the Kazi Law Firm, PLLC for your trademark needs. Let us protect your
business identity.
Submitting our form does not create an attorney-client relationship.
The information provided does not constitute legal advice nor does it constitute an attorney client agreement.
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