When you start a business, one of the first things you will do is to decide on a business name. Over time, the business does well, and you build a reputation for your product or services.
You don’t want any other seller duplicating your product or services, so you choose a mark or symbol that distinguishes your product. That mark becomes your trademark. But how do you trademark your business name? Or you might ask, “do I need to trademark my business name?”. This article answers these doubts with a 7-step process for trademarking your business name.
1. Do I Need to Trademark My Business Name?: What is a Trademark?
Trademark is a type of intellectual property. It refers to the property that is not tangible but a creation of the human mind.
Section 2(zb) of the Trademark Act, 1999 defines a trademark as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.”
Trademark helps the owner to let the consumer distinguish between his product and other products.
For example, you want to have Starbucks coffee but do not know Starbucks’s brand icon ( green lady). You get confused because you can find several coffee sellers selling coffee by using Starbucks in their brand name.
It would be impossible for you to identify the original Starbucks and taste its coffee.
Now that you know, Starbucks has trademarked the green lady, and no other brand can use its icon. You will be sure of getting the original coffee.
Trademark is a brand symbol for the business name, and their importance is growing exponentially. Trademark is any word, symbol, logo, design, mark, or combination of some or all of them.
2. How will Trademark Help My Business Name?
In today’s time, branding is essential for any business or company to grow. It can help your consumers to get your authentic product and prevent others from degrading your goodwill.
It helps you to use your own business name exclusively. Because it takes a lot of time and effort to think of a business name. However, if you do not get a trademark, someone else may come up with the same name.
A registered trademark helps you prevent this situation. In case of an infringement of legal rights over a trademark in the future, you will benefit from getting it trademarked before the other party.
It will help with consumer loyalty and make it easier for them to remember your business name.
Do you know what R or TM stands for near the name of certain brands? It means those brands are registered trademarks under the applicable law. These marks create a sense of reliability in the minds of common people about your brand. Usually, people prefer brands that are trademarked between brands of similar kinds.
By trademarking your business name, you will get trademark protection all over India and in other countries.
It provides you trademark protection against a business entity or company that might use a similar symbol or same name. And also gives you a right to take legal action against such a company for trademark infringement.
For example, a business entity or company can’t use the name “Sardarbuksh” when the business name “Starbucks” is trademarked because it can create confusion in the mind of consumers due to the similar names.
Now that you know the importance of a trademark. Let’s dive into its other essentials for trademark protection and further search for the question, “do I need to trademark my business name?”.
3. What are the Types of Trademarks?
3.1. Product Mark
Product mark is used for trademarks of classes 1-35. It is used on the product to distinguish it from other products and can’t be used for services. A different type of trademark known as the service mark is used for services.
3.2. Device Mark
A device mark is a logo or symbol used for your brand name. The wordmark differs from the device mark and is not included in the device mark.
These marks must be registered separately to get trademark protection against them.
3.3. Word Mark
The protection is given to only words as a trademark, such as words and letters, and no signs or symbols, e.g., Bata, Nestle, etc.
If you have a unique business name, you can get it trademarked to prevent it from a third-party breach.
3.4. Shape Trademark or Trade Dress
These marks are used to trademark the product’s shape so that any other company can not use it. For example, the chocolate ‘KitKat’ has trademarked its shape, and no other company can copy it.
3.5. Certification Marks
These marks are used on products and goods to specify a quality standard. For example, food products with certification marks of FSSAI are qualified to be of a quality prescribed by the government of India.
3.6. Sound Marks
Many companies trademark their sounds. For example, the ring tone of Nokia, the startup sound of windows, the ring tone of iPhone, and so on.
3.7. Series Mark
These marks are used by a company with more than one product or service in the market.
Instead of filing a new trademark application for every other new product or service, the trademark owner simply adds the trademarked word before their product or service name or any subsidiary company.
For example, Tata has Tata Motors, Tata Salt, Tata Tea, and more.
3.8. Collective Mark
A collective mark works for a group of individuals belonging to the same kind of group. The trademark owner can be a public institution or an association.
For example, the doctors and no one else can only use the word Dr. They can use it since they represent the service they provide. Another example is the chartered accountants’ use of the word CA. It can only be used by people associated with the Institute of Charted Accountants of India.
Similarly, the word “Adv.” can only be used by the advocates and no one else.
4. Who can Apply for a Trademark?
Any individual or business can file for a trademark. This includes any limited liability company, partnership firm, or joint business entity.
5. Can I Trademark My Business for Free?
You need to pay an application fee to trademark your business name. The company registration fee is Rs. 9000, while the application fee for an individual is Rs. 4500.
5. How do I Trademark My Business Name?
Here is the step-by-step guide for you to trademark your business name:
5.1. Step 1:
Decide on a Unique Business Name and a Logo for it for the Registration
It might sound easy but choosing a unique business name is a not-so-easy task. It requires time and commitment from your side to come up with a name that matches you and your brand identity.
A simple google search can give you many synonyms for your desired name. Choosing a trendy yet comfortable name for the common person to pronounce and remember is advisable.
Also, identify the trademark classes to which your trademark belongs. For example, there are 45 classes in which your trademark can fall. Classes 1-34 are for goods, and 35-45 are for services.
Class 1 belongs to chemicals for industry use; class 2 refers to paints and varnishes; class 3 refers to non-medicated cosmetics, and so on. You can access the full list here.
5.2. Step 2:
Do an Online Search for the Desired Name
After deciding on the name, the next step should be to do an online search for the chosen business name to determine if it infringes any existing trademark.
You can research through the trademark search database available at the official website of the Controller General of Patents, Designs, and Trademarks. If it shows no marks for the name selected, you are good to go with that business name.
It is important to note that trademarks are country-specific and governed by their specific trademark law. So, one must register the business name in different jurisdictions to get them trademarked in other countries.
You need to check for the trademark’s availability for registration in the US. For this, you must research the US trademark registry database to see if identical trademarks are already registered.
5.3. Step 3:
Fill in the Application
When you’re sure about the uniqueness of your business name or symbol, you can proceed with the application to register a trademark.
The Trade Marks Registry in India governs trademark registration by the Trademark Act, 1999. Form TM-1 provides you to fill application for trademark registration.
You can download the form from the Controller General of Patents, Designs, and Trademarks website.
The next step is to fill out the form and submit it. You can either submit it to the trademark office or through the online portal.
Certain documents must be submitted at the time of registration by the business owner, such as identity and address proof of the business directors.
Once the trademark application is submitted to the trademark office, a trademark application number is provided to the business owner after submitting a prescribed application fee.
5.4. Step 4:
Vienna Codification Process
After completing the application process, the trademark registrar will apply the Vienna Classification to the application submitted by the business owner. Vienna Classification is one of the procedures that is applied to the trademark application process.
5.5. Step 5:
Acceptance or Objection
Then the registrar checks if all your documents meet the requirements for the trademark application.
The registrar puts up an objection for the applicant, also known as the office action, in case of some missing documents or any legal requirements.
The applicant appears before the patent and trademark office to resolve the issue. If the officer is satisfied with the new corrections, they forward the trademark to be published in the trademark journal.
5.6. Step 6:
Objections on Publication
After the trademark publication in the trademark journal, a third party is allowed to file an objection for the trademark less than four months after the publication.
If a third party files such an objection, the applicant has to submit a reply within two months of receiving the objection. The registrar will listen to both parties and pass the appropriate order.
If satisfied with the applicant’s justifications, they will pass the trademark application, and the trademark will be registered. However, if they order in favor of the third party, the trademark registration will not be granted to the applicant.
5.7. Step 7:
Any party can apply to the appeal board within three months of passing such orders, and no appeal shall be allowed after that.
6. Duration of Trademark Rights
Trademarks are valid as long as the brand is in commercial use. As compared to different intellectual properties, a trademark provides business owners to continue using the name and logo as long as the business operates.
The registration validity is 10 years, after which it has to be renewed.
7. Reasons for Refusal
Section 11 of the Trademark Act, 1999, the register can refuse to register your trademark if it is similar to an existing mark or there is a possibility of confusion with the existing mark or if there exists a well-known trademark.
8. Provisions on Well-Known Marks
Well-known marks are the marks that are known by a larger population of society. Sub-sections 6-11 of the Trademark Act provide provisions for well-known trademarks.
9. What Amounts to Infringement?
You have seen the importance of getting your business name trademarked. Apart from getting a brand name that helps you market your business entity, it gives you exclusive rights to use that name and helps you against any other company using a similar or same company name.
In the case of Starbucks v Sardarbuksh, the latter company had the same name and logo as that Starbucks.
Since Starbucks has a registered trademark symbol in India, Sardarbaksh was an unregistered trademark. It had to change its name and pay a heavy penalty for copying a registered trademark.
10. Grounds of Infringement of Trademark
Infringement of trademarks means the other party’s unlawful use of a registered trademark. There shall be no action against the infringement of any unregistered trademark. However, legal remedies are available to a party registering their trademark.
The various grounds for infringement are as follows-
- The mark is registered for the trademark exactly like an existing trademark or is deceptive of the same nature as the registered goods or services.
- A similar logo, word, or symbol creates confusion in the mind of common people between the two disputed trademarks or when it creates an impression in the minds that one is related to another.
- When the disputed trademark is used as a part of a trading name for goods and services for an existing trademark.
- When the disputed trademark is advertised, it gains an unfair advantage over the existing trademark.
- If the registered trademark is used in the material meant for packaging or labeling other goods, or even as a business paper without due authorization of the registered user.
11. USPTO (United States Patent and Trademark Office)
In the United States, trademark registration is governed by the United States Patent and Trademark Office. The parties must follow the steps mentioned above for trademark applications to register their business names in the US.
After deciding on a unique name, the parties can search it on the USPTO’s database and then file it online on the TEAS (Trademark Electronic Application System).
The only difference is the time to file objections and submit replies before the registrar.
12. Conclusion: Do I Need to Trademark My Business Name?
By now, you must have got an answer to your question, ” do I need to trademark my business name? “ and how you can get your business a registered trademark. Trademark is a brand identity for your business. It helps you in marketing your brand. It works as your brand’s voice and gives you trademark rights against infringement on others’ part.
Registering a trademark is simple; you can do it easily if you choose a unique name for your business entity.
Trademark helps small business owners and big business names make a mark in the industry. In today’s social media age, it is pertinent for every business to get itself trademarked to enjoy the rights and prevent any misuse or harm to the goodwill of the brand name.
So, if you’re an entrepreneur or starting your small business or even a name established in your niche, don’t overthink whether “do I need to trademark my business name?” or not. Get your business name registered as soon as possible.