Picking a business name? Great! Now let’s make sure you can actually use it— and that you can own it. Here’s exactly how to trademark a business name the right way—without skipping steps or wasting money.
Your Business Name Deserves More Than a Domain
A federal trademark registration is the gold standard when it comes to protecting your brand name nationwide.
If you’re already investing in design, packaging, a website—or let’s be honest, hours in Canva—then it’s time to lock down your rights.
First—What Does It Mean to “Trademark” a Name?
Trademarking your business name means you’re claiming it as a source identifier in commerce. It’s how customers recognize your brand in a crowded market. When you register it with the USPTO, you get legal benefits:
– Nationwide priority
– Public notice of ownership
– The right to stop copycats (without messy common law debates)
- The right to recover “big money” damages and even costs + attorneys fees.
Important note: Forming an LLC or grabbing a domain doesn’t necessarily give you trademark rights. Those things are great—but they’re not the same as a trademark, nor do they mean you’re in the clear to use a specific word or phrase!
Step 1: Make Sure the Name Can Be Trademarked
Not every name qualifies for federal protection. (Sorry, “Best Coffee Shop” isn’t going to cut it.)
To qualify for trademark protection, your business name needs to be:
– Distinctive (not generic or merely descriptive of the underlying product/ service)
– Unique enough to avoid confusion with other registered trademarks
– Actually used—or intended to be used—in commerce across state lines, meaning that you’re actually selling something.
Strong trademarks are often made-up words (think Zillow), arbitrary words that have nothing to do with the underlying product or service (Apple for computers, Google for searching), or clever suggestive names thst make you think (Netflix, anyone?). Weak trademarks? They’ll cost you later.
Step 2: Run a Real Clearance Search
This is the part most DIYers gloss over—and where most trademark disasters begin.
A clearance search checks for existing trademarks, similar names, and red flags that could kill your application. You want to know who else is out there before you spend a dime on branding— because an existing mark holder could demand you rebrand.
At a minimum, your search should cover:
- The USPTO database (formerly TESS)
- Social media handles
- State trademark registries
- Translations (the USPTO would say “Gato” and “Cat” are identical)
- State corporations commissions
At CJFox Law, we pay tovrun comprehensive searches with full federal, state, and common law searches and give you real analysis on your likelihood of success —not just an 800 page PDF of search results and a shrug emoji 🤷♀️
Step 3: Decide What You’re Actually Filing to Protect
You can trademark more than just your business name. Depending on how you operate, you might also want to file an application protecting:
– Your logo
– Your tagline
– Your product or service names
-Packaging
-Color
-Design (trade dress)
Each of these requires a separate application, but we’ll help you prioritize based on where your brand has the most risk (and what will provide the most value).
Step 4: Choose Your Filing Basis
The most important question the USPTO asks: Are you already using this name in commerce, or do you plan to?
You’ll select a type of application based on this answer— either:
– “Use in commerce” – You’re already offering the goods/services under this name.
– “Intent to use” – You haven’t launched yet, but you plan to use the name soon (within the next 3 years). This is also called a “1(b)” application. The “intent to use” option lets you claim rights before your official launch—which can be a game changer if you’re building in public and need that extra protection upfront. However, it requires some extra fees.
Step 5: Prep and File the Trademark Application
Here’s where a lot of applications go sideways. The USPTO wants things written out just so. Some of the info you’ll need to complete their tasks includes:
– The exact trademark you’re registering
– A specific description of your goods/services, along with the “Class number” (this matters *a lot*)
– Your filing basis
– A specimen showing how the trademark is used in commerce (if applicable)
So what if you choose the wrong class? Well: You could end up with a registration that doesn’t protect your actual business—or worse, get rejected entirely.
Step 6: Handle the Office Action (If You Get One)
Once filed, your application goes to a USPTO examining attorney. If they spot any issues, you’ll receive an Office Action—basically, a formal “we have concerns.”
Common reasons include:
– Your name is too similar to an existing trademark (also called a “2(d)” rejection)
– Your name is descriptive or generic
– Your specimen doesn’t meet the standards required by the USPTO
You usually have three months to respond, and the response has to be on point and needs to cite cases to support it (This is not the time for ChatGPT.)
CJFox Law handles Office Action responses regularly—we know how to fight refusals and fix errors.
Step 7: The Opposition Period
Once the USPTO approves your application, it gets published in the Official Gazette for a 30-day opposition period. This gives other trademark owners a chance to say, “Hey—that’s too close to mine.”
If someone files a Notice of Opposition, it kicks off a legal dispute at the Trademark Trial and Appeal Board (TTAB)—think: litigation-lite, within the USPTO. It’s formal, it’s time-consuming, and it’s avoidable with a solid clearance search up front.
Most applications sail through this phase. But if you’re in a crowded industry, it’s good to know this window exists.
Step 8: Registration (or the Next Step If You Filed Intent to Use)
If no one opposes your application during the 30-day publication period, and all is well, you’ll receive your registration certificate (if filed based on use).
If you filed based on intent to use, you’ll get a Notice of Allowance first, and then you’ll need to submit a Statement of Use showing how the name is actually being used.
Either way, once you’re registered, you’ve got the trademark— and your trademark becomes a business asset.
Step 8: Maintain Your Registration
⏰ Don’t set it and forget it! Trademarks require maintenance.
You’ll need to:
– File a Section 8 declaration between years 5 and 6
– Renew at year 10, and every 10 years after that
– Keep using the trademark in commerce
Miss the Renewal? The USPTO will cancel your registration (Yes, even if you’re still using the mark).
Bonus: What If Someone Else Is Using My Name?
If you have a registered trademark, you’ve got options—real ones.
You can:
– Send a cease-and-desist letter with teeth
– Stop copycats on platforms like Etsy, Amazon, and Instagram
– Block infringing applications from registering
– File an enforcement action at the TTAB or in federal court
Without a registration, your options are… messier. (Think: piecing together common law rights and crossing your fingers, but not getting attorneys fees— ouch).
So Do You Really Need a Lawyer to File a Trademark?
You can file on your own, just like you can cut your own hair. But should you? That depends on how much you’re willing to risk.
A trademark lawyer will:
– Run a full clearance search
– Draft and file a clean application
– Respond to Office Actions professionally
– Help you avoid costly mistakes and delays
Let’s Make It Official
Your business name isn’t just a name—it’s the foundation of your brand. Protect it before someone else tries to claim it.
Need Help Trademarking Your Business Name?
At CJFox Law, we don’t just fill out forms—we give you strategy, clarity, and confidence. And we do it with flat fees, clear timelines, and real communication. We’ll run a real search, explain your risks, and file the right application—so you can focus on growing your business without looking over your shoulder. Let’s file your trademark together and get you protected!
