By Michael Kondoudis, Small Business Trademark Attorney
This is our ultimate guide to how to trademark a product name.
Most business owners and entrepreneurs know the importance of product names. But how do you legally protect the name of product? That’s where trademarks come in.
If you want to quickly:
- Understand the basics of trademarking a product name
- Learn why you need to trademark the name of your product
- Discover the advantages of trademarking product names
- Identify risks of not trademarking a product name
- How to trademark the name of your product
- Figure out when to trademark your product name
- Start a plan to legally protect your product name
Then this guide is for you.
Let’s get started.
PART I: THE BASICS OF TRADEMARKS FOR PRODUCTS
In this section, we’ll go over the basics of trademarks and how they protect product names.
The best way to legally protect the name of a product is to trademark it. Trademarks protect names, including the names of products. With a trademark, you can legally protect the name used to identify your product. Trademarking your product name is official confirmation that you legally own it. Trademarking your product name will give you exclusive rights to use it and prevent others from using the same or similar name in your industry. Trademarking the name of your product is the best way to protect it.
What is a trademark?
A trademark is a distinctive word, symbol, or phrase that identifies products from one enterprise and distinguishes them from products from the competition. Trademarks protect names, especially the names of products. Buyers use trademarks to pick among brands of products.
Where do you get a trademark for your product name?
You get a product trademark from the U.S. Patent and Trademark Office (USPTO). To get a trademark for your product name, you need to apply to the USPTO and then navigate an examination process. Product trademarks are granted by the USPTO.
What kinds of product names can be trademarked?
The most common product trademarks are words (names), phrases, logos, and designs. Examples include abbreviations and unique names, like these:
PART II: WHY YOU NEED TO TRADEMARK THE NAMES OF YOUR PRODUCTS
In this section, we’ll explore the reasons why trademarking product names is so important, the advantages of trademarking a product name, the risks of not trademarking your product name.
Product names, like all trademarks, represent brands. They help customers find the products that they like and distinguish them from the competition. After all, your product name is how most customers will identify and remember your products. That’s why trademarking a name, including trademarking a product name, is so important and why you want to ensure that your product name is protected.
Top Six Reasons to Trademark a Product Name
Trademarking is a powerful tool to stop unauthorized use of your product name by copycats. Here are the top six reasons why:
1. Exclusivity. Trademarking your product name gives you the exclusive right to use it. Typically, only one business can use a product name in an industry, and it is usually the one that trademarks the product name first.
2. Legal Ownership. When you trademark a product name, no one else in your industry can register it, take it from you, and force you to rebrand. Here again, typically only one business can own a product name in an industry, and it is usually the one that trademarks the product name first.
3. Distinctiveness. A trademark for the name of your product helps distinguish your product from others on the market, which means that buyer loyalty for your high-quality product flows to you.
4. Cost-Savings over time. Trademarking your product name comes with important legal rights and presumptions that make enforcing your ownership rights less expensive if someone else tries to use your product name without permission.
5. Deterrence. When you trademark your product name, you can use the ® symbol with it. This can deter would-be copycats from trying to use your product name and can help you enforce your rights if someone uses your product name without permission.
6. Value. Having a registered trademark for your product name can also make it easier to sell or license it because potential buyers or licensees will know that they can use the name without the risk of infringing on someone else’s rights.
These are important advantages that can help a forward-thinking business.
Top Four Risks of Not Trademarking A Product Name
Choosing not to trademark a unique product name can have serious consequences. Here are the top four risks you face when you don’t trademark your product name.
1. Risk of a rebrand. If someone else trademarks your product name first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand.
2. No exclusivity. Other businesses may use your product name and you won’t be able to stop them. As a result, imitators can benefit from your product’s goodwill, and you name may become worthless if too many companies use your name.
3. Lost sales due to confusion. Your business could suffer from a loss of revenue if customers confuse your product with one sold under a similar same.
4. Higher costs in the long run. You will likely have to spend more on monitoring and enforcing your product name trademark if it is not registered.
These are just some of the risks that you avoid when you trademark a product name.
Do you need help with your trademark?
PART III: HOW TO TRADEMARK A PRODUCT NAME
In this section, we’ll walk through the seven key steps to trademarking a product name.
Trademarking a name, especially a product name, involves federal law and legal procedures. Plus, every path to trademark registration is different. Still, every successful trademark for a product name involves the same seven steps.
Here are the seven essential steps to trademark a product name:
- Choose a Unique and Protectable Brand Name for Your Product
- Hire a Trademark Attorney for Your Product Name Trademark
- Perform a Trademark Search for the Name of Your Product
- Collect the Required Information and Develop Your Strategy
- Prepare and File a Trademark Application with the USPTO
- Navigate the Trademark Examination Process
- Use the ® Trademark Symbol with Your Trademarked Product Name
1. Choose a unique and protectable brand name for your product
The key to getting a federal trademark is to start with a unique and protectable name (i.e., one that is trademarkable). This name should be able to distinguish your product from other products on the market. It should also be easy for customers to remember and pronounce.
Beware: Trademarks are not created equal. There are different kinds, and some are more effective and easier to protect than others.
The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.
Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.
How do you select a product name that is unique and protectable?
To ensure uniqueness, avoid names that are too similar to existing trademarks. (More about that in step #2)
To ensure protectability, the best option is to invent a word or phrase or get creative with spellings. (think: EXXON for oil or LYFT for ride-sharing). Another option, if you’re looking to trademark a product name, is to use words that are unrelated to your product. (think: Apple for computers or Amazon for online retail).
A third option if you’re looking to trademark a product name, is to brainstorm terms and phrases that suggest features, aspects, ingredients, or results of your product. (think: SNUGGLE for dryer sheets or IRISH SPRING for soap).
Lastly, if you’re looking to trademark a product name, try to avoid using descriptive or generic names or terms. These product names are difficult to trademark and tend not to be unique by their very nature. (think: “speedy” for delivery services or “sweet” for candy).
If you aren’t sure whether your mark is protectable (i.e., strong), you may be better off consulting an experienced trademark attorney. In any event, knowing the kinds of trademarks is very important. Otherwise, you could be wasting your time and money.
2. Hire a trademark attorney for your product trademark
Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration. Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their product names. That makes hiring a trademark attorney an excellent investment, regardless of whether you have previously trademarked a name or this is your first time going through the registration process to trademark a name.
Why?
Trademark attorneys are skilled in navigating the trademarking process, a federal legal proceeding involving an agency of the Federal government. Trademarking a product name is complex and requires a working knowledge of federal trademark law and the U.S. Patent and Trademark Office’s rules and regulations. Trademark lawyers understand the process, the pitfalls, and strategies that can help register your product name. Also, a trademark attorney can (1) help decide what to search for and (2) correctly interpret your search results. Trademarks do not need to be identical to conflict!
Every application starts a Federal legal proceeding involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.
Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.
The USPTO recommends hiring a trademark attorney!
The U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:
“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”
There are several reasons why the U.S. Patent and Trademark Office (USPTO) recommends hiring a private attorney. First, an attorney is familiar with the USPTO’s procedures and can ensure that the application is filed correctly. Second, an attorney can help search for existing trademarks to avoid potential conflicts. Third, if there are any objections to the application, an attorney can represent the applicant in proceedings before the USPTO.
Beware: Not all trademark applications result in trademark registrations. The USPTO severely limits the changes you can make to an application after it is filed. So, mistakes during submission can quickly sink an application.
3. Perform a trademark search for the name of your product.
Before you can trademark your product name, you need to ensure that it’s not already been trademarked by another business. You can do this by conducting a trademark search for your brand name. This search will help you find out if any similar or identical trademarks are already registered.
This is a crucial step in the trademark registration process.
Why?
First, you want to make sure that your trademark is not already in use by someone else. Second, searching through existing trademarks can give you a better understanding of what is already out there and help you develop a more unique and original trademark for your business. Finally, if you do not search for similar trademarks before filing your application, you risk having your application denied or your trademark being declared invalid.
Additionally, if you have already started using your trademark in commerce, it is important to search to make sure that you are not infringing on someone else’s intellectual property. If you infringe, you could face legal action and be forced to stop using your trademark.
THE USPTO’S TESS SYSTEM
The objective here is to ensure that your product name is not similar or easily confused with someone else’s mark. This, in turn, can help you avoid any potential legal issues down the road and help you to ensure that your trademark is protectable and unique.
Beware: These searches aren’t as straightforward as inputting your product name and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.
For all of these reasons (and others), it’s usually best to have an attorney run your trademark search.
4. Collect Information and Decide on a Trademarking Strategy
The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.
When you apply for a federal registration for your product name, you start a federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls. Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it. So, the most successful applicants start the application process with a strategy.
For starters, you’ll need to decide:
- what is the best format for your mark – is a composite mark better than standard characters? Will you need a “drawing”?;
- which products/services you should include in your application and which ones should be excluded; and
- what is the correct filing basis for their application?
If you don’t understand the legal consequences of each of these options, you’re very likely to get one or more of them wrong, which will impact your brand protection.
Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.
Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.
These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.
5. File a Trademark Application for Your Product Name
After you’ve had a trademark search performed and are confident that your product name is available, the next step is to prepare and file a trademark application with the USPTO.
Note: You will need to verify your identity and have a USPTO.gov account.
You will need to provide the USPTO with precise information, including:
- The legal owner and user of the product name
- The legal use basis for your trademark application
- The products and services with which the product name is used (or will be used)
- Proper legal evidence of your use of the product name (not every use qualifies)
Mistakes in this step are among the top reasons that the USPTO rejects trademark applications. Also, the USPTO severely limits changes to applications after they are filed. As a result, many mistakes cannot be corrected – even some spelling errors.
6. Navigate the application process at the USPTO
The USPTO will review your trademark application to make sure it meets all the requirements for registration. They will also examine your product name to determine if it is similar or could be confused with an existing trademark. This examination process can take several months, so it is important to ensure that there are no mistakes in your application.
Beware: The USPTO has, for many years, a perpetual backlog of applications. This means that it will be several months before a trademark examiner looks at your trademark and examines it. The current backlog is over six months, and the entire trademarking process takes about 12 months on average to complete.
Working with a trademark attorney can help ensure that your application is complete and correctly filed, to avoid further delays. – mention strategic calls here
7. Use the ® Trademark Symbol with Your Trademarked Product Name
Using a trademark symbol is an important signal to consumers (and the competition) that your product name represents your brand.
There are three trademark symbols. They are:
- the letters TM
- the letters SM, and
- the letter R in a circle — ®
The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).
The letters SM are a trademark symbol for unregistered service marks (marks for services like legal services).
The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for federal trademarks only – after you have a federal trademark registration.
Read more: Read our guide to trademark symbols here.
Do you need help with your trademark?
PART IV: WHEN TO TRADEMARK A PRODUCT NAME
In this section, we’ll explore when you should trademark your product name. Waiting too long can have serious consequences.
Most authorities agree that in most situations, it is best to file new trademark applications early – even before a business begins selling or marketing a product.
Why?
Firstly, the trademarking process can more than 12 months in most cases. So, the sooner you start, the sooner you can legally own your product name. Plus, starting early will reduce the time your product in on the market without full trademark protection.
Secondly, starting early maximizes the chances that you will own the trademark for your product name. If a competitor files for the same or a similar name, the U.S Patent and Trademark Office may reject your trademarks. Thousands of new applications are filed every day, so waiting for as little as a few weeks can become a risk.
If you have a unique product name, you should file for a product trademark as soon as possible. Filing for your trademark is the easiest way to avoid costly legal battles over ownership of your product name.
So, the answers to the questions “when should I trademark my product name” or “when should I trademark the name of my product” are the same. You should trademark a product name as soon as possible.
PART V: HOW TO PROTECT THE NAME OF A PRODUCT
Trademarks protect product names and are important. But, trademarks are just part of the plan. Here’s the rest.
A unique product name is a valuable asset. Think about it. There is something about CHICKEN MCNUGGETS, a CHEVY CORVETTE, or a SONY PS5, for example. Product names matter. Here’s how to protect them.
1. Register your product trademarks: Trademarking product names leads to legal ownership and brand security. Plus, a trademark owner is in a much better position to enforce trademark rights.
2. Consider subscribing to a trademark watch service: A trademark owner can’t monitor and track every infringing use. Trademark watch services allow the trademark owner to monitor relevant markets and Internet content for possible infringing activity. Consider designating outside counsel to review these reports as they come in. By working with a watch service, owners can be notified of infringing activity sooner rather than later and can take swift action as these issues arise.
3. Immediately notify infringers of infringing activity: When infringing activity is detected, brand owners should report this infringement to the infringer and the platform/outlet where the infringement took place. Many of these entities do not want to be liable for any contributory infringement, so they have mechanisms in place to remove infringing content once they become aware of it.
4. Use your trademarks correctly and with the correct trademark symbol: Using a trademark symbol conditions customers to recognize your brand names and logos and to start associating them with your business.
PART VI: FAQS ABOUT TRADEMARKING PRODUCT NAMES
1. Can product names be trademarks?
Yes. Business names, product names, logos, and labels can all be trademarks. You acquire a trademark by using your mark in commerce—in other words, using it when you conduct your business. You should register your product name trademark with the U.S. Patent and Trademark Office (USPTO) for the most protection.
2. Does a trademark protect a product name?
Yes. A trademark typically protects brand names and logos used on goods and services.
3. Do I copyright or trademark my brand name?
You trademark brand names, like the names of products. Copyright laws protect original artistic/creative work. Trademark laws protect items that distinguish or identify a particular business or its products or services from the competition.
4. How do I trademark a product name?
To trademark a product name, you’ll need to file a trademark application with the USPTO. The application will require you to provide information about your product, as well as the proposed mark. Once the application is filed, it will be reviewed by an examining attorney to ensure that it meets all the legal requirements for registration. If it does, the mark will be published in the Official Gazette, and anyone who believes they would be harmed by the registration of the mark will have an opportunity to file an opposition. If no one files an opposition, or if the opposition is unsuccessful, your mark will be registered and you’ll be able to use it to brand your product.
5. What are the benefits of trademarking a product name?
There are several benefits to trademarking a product name, including:
- It can help you establish and protect your brand identity.
- It can help you distinguish your products from those of your competitors.
- It can help you build customer loyalty and goodwill.
- It can give you legal recourse if someone else uses your product name without permission.
- It can help you avoid costly disputes down the road.
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).
