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Your business’s name is often the first interaction a consumer has with your brand, and with new businesses opening daily across the Sunshine State, the right business name could help your startup stand out in a crowded market, as well. Just like any other business asset, the name of your startup should be protected. Read on to learn more about why you should protect your trademarks and the steps to take to register your trademarks with the USPTO.
How to Trademark the Name?
The United States is a common law country, so you’ll have some limited rights to your venture’s name as soon as you use it in public. Unfortunately, these rights are often not enough to protect a brand. For instance, if your business is based in Palm Beach Gardens, your mark will only be protected in disputes that arise in South Florida.
If you have plans to expand to Tampa, Jacksonville, or outside of Florida all together in the future, you may be prohibited from using your business name is certain areas where confusingly similar business names are already in use.
You’ll also face more challenges asserting your trademark rights in court and won’t be able to sue an infringer for damages. In order to ensure that your business name is protected in Florida and across the country, you’ll need to register your trademark with the USPTO.
Types of Trademarks
The USPTO won’t allow trademark registration for all company names. So how to Trademark the Name? If your name merely describes your goods or services (e.g. “Comfortable Mattresses”) your application will likely be refused registration by the USPTO. In addition, surnames often face an uphill battle in trademark registration.
A business name including a surname will not appear on Principal Register unless a business owner can demonstrate deep market penetration (known as “secondary meaning”). McDonalds, for instance, is much more commonly associated with burgers and fries than the McDonald brothers that opened the original restaurant, so the secondary meaning is well established.
As you can imagine, however, the ability to demonstrate secondary meaning isn’t easy and often takes years to accomplish.
- Suggestive trademarks, which hint at what the business offers rather than describe it, can obtain trademark registration. Planet Fitness is a good example of a suggestive trademark.
- Arbitrary marks include words that have nothing to do with the product or service being offered. Common examples would be “APPLE” for a brand of computers or “AMAZON” for an online retailer. These are considered stronger than suggestive marks, because of the low likelihood that a business would use the same word in conjunction with similar products.
- Fanciful marks, which are made-up words like KODAK, offer the strongest protections. Both arbitrary and fanciful marks, however, require more advertising and brand education so consumers understand what goods and services the businesses offer.
Steps to Trademark a Startup
How to Trademark the Name? Before you begin to fill out your trademark application, take some time to conduct a comprehensive trademark search. Because the USPTO will not approve your application if a confusingly similar mark is already in use, conducting a search will alert you to potential conflicts before you submit your application and pay your filing fees.
If you find that another business is already using your business name or something like it, you should consider selecting a different name and conducting an additional search before you submit your application.
The USPTO no longer accepts paper applications, so you’ll need to complete your trademark application online. Throughout the application process, you may receive Office Actions, which are issued by the USPTO when additional information is needed or your application has been rejected.
When you receive an Office Action, it’s important to respond appropriately and within the timeline set by the USPTO, which is typically within six months of the Office Action’s issue date. Failing to respond by the deadline could result in the rejection of your application.
Once your trademark registration is approved, your mark will have valuable protections, but only if you use them. As a trademark owner, it will be your responsibility to monitor your trademark’s use and take legal action against infringement when necessary.
Understandably, the owner of a startup may not have the bandwidth to tackle this important task alone. Fortunately, most trademark attorneys offer monitoring services and will assist you when a potential infringement is found.
Protect your Florida Startup Through Trademark Registration
With beautiful weather, year-round tourism, and steady population growth, it’s always a great time to open a business in Florida. Whether you plan to open an IT firm in Miami or launch your smartphone app in Clearwater, it’s important to protect your startup through trademark registration.
Choose a strong business name and conduct a search to make sure it’s not already in use. Then submit your application to the USPTO and respond to Office Actions when needed. Once your trademark has been approved, monitor its use and take action against infringers to ensure your Florida brand is protected now and well into the future.
Gerben Intellectual Property
How to Trademark the Name of your Florida Startup?
Josh Gerben is the founder of gerbenlaw.com (Gerben Intellectual Property), a full-service IP firm that services clients throughout the U.S., with multiple offices, including a physical office in Miami, Florida. Josh and his team of attorneys, paralegals, and support staff offer a range of trademark, patent, and copyright services.
Since 2008, Gerben IP has secured over 6,000 trademark registrations for clients and has been featured in a range of national news outlets: CNN, AP, CNBC, Fox News, ESPN, and more.