How to Trademark a Name
Like an artist’s signature on a painting, or a monogram on a wax seal, a trademark was historically an identifying mark that would help consumers to identify the producer of a product. Trademarks that came to represent good quality helped companies to grow in popularity and develop a reputation resulting in loyal customers and goodwill, even on a global scale.
You can also trademark a slogan or trademark a logo, but this article focuses on how to trademark a name.
Can you trademark a person’s name?
The trademark definition allows for a personal name to be registered as a trademark. A trademark gives you the exclusive right to use specific words, phrases, symbols or logos/images to identify your business.
For example, clothing designers often trademark their personal names to use as their fashion label brands. Below are some New Zealand trademark registrations for personal names:
If the IP Office has questions about the registrability of a personal name as a trademark, they may ask you to provide:
Consent to registration from the actual person whose name it is;
If the person has died, consent to registration from their estate; or
Confirmation that the name is a made up name
Read When is a trademark not registrable?
How to trademark a business name
You can’t simply register a name as a company name to prevent another person from using that name in the future.
If you want to trademark a personal name to use for business in the near future, you will need to specify the goods and services (and their classes) for which it will be used.
For example, Karen Walker has eight New Zealand trademark registrations for different classes of goods, including household textile goods, household utensils, cosmetics and cleaning products, nail varnishes, clothing, headgear and footwear, jewellery and eyewear plus services for retail, advertising and business management.
However, if someone else applied to register KAREN WALKER for accounting services, accounting services are dissimilar to the goods and services for which Karen Walker has registered her name as a trademark. That said, we would expect the IP Office to at least ask questions about the name before accepting it for registration, including whether it belonged to the applicant, whether consent of Karen Walker had been obtained if it didn’t belong to the applicant or whether it was a made up name.
Click here for more information about the importance of a trademark business name and tips for choosing a business name.
How do you trademark a name?
Getting a trademark for a name is a strategic business decision. Essentially it’s a straightforward process that often involves conducting a trademark search, submitting an application to the IP Office and then responding to any objections that may arise.
DIY Trademarks makes applying for a trademark uncomplicated. It’s important that you first do a search to ensure that your intended name has not been registered already. You also want to be sure that it is distinctive to reduce the risk of trademark objections and oppositions.
1. Trademark Name Search
Checking that your trademark is not already in use or confusingly similar to an existing registered trademark can help you avoid potential problems later on. A search of the IP Office trademark records can also show pending trademark applications which may be confusingly similar to your trademark name. In addition, it’s worth searching the Internet and local business directories to make sure no other business is already using the name. Even if it’s not registered as a trademark, you don’t want to risk brand confusion or legal complications later on.
Read this article to find 5 ways you can do a comprehensive search: How to Conduct a Trademark Name Search
2. Submit a trademark application online
Our DIY Trademarks application platform helps you file for a trademark registration painlessly. Apply for a trademark online in 4 easy steps:
Enter your trademark name
Select the recommended goods and/services
Enter the trademark owner’s details
Pay for the application
3. Respond to the IP Office
After your trademark application is submitted to the IP Office, it is not registered instantly.
Your application must first go through an examination process. A trademark examiner will check that it meets the legal requirements for registration. You’ll be notified if there are any objections or advised that your trademark application is accepted.
If your trademark is accepted, then your application will be advertised for a period of 3 months, to allow third parties to oppose registration. If there’s no trademark opposition, your trademark should be registered within 3 months of the opposition period expiring.
The earliest date your trademark will be registered is six months from the date of application.
If you receive any objections or oppositions along the way, you’ll have to respond as promptly as possible to avoid further delays. You may need legal assistance in some instances.
Once you receive confirmation that your trademark has been registered, you can start to use the registered trademark symbol ® with your trademark name and enjoy the exclusive brand protection that registration gives.
Ready to trademark a name? This article will guide you through the preliminary steps: How to get a Trademark