Trademarking Your Business Name

There is a difference between trademarks and business names and it’s important to understand the differences between the two when you’re thinking about protecting your brand.

If you are planning to start a new business, you will need to register a business name when you set up your company. At the same time, you should think about registering your new brand as a trademark. You might also need to register a trademark for your logo and possibly trademark a slogan, domain name and social media brand identities.

Why should you register a trademark? Here are 5 good reasons why you should register your mark and ensure you have trademark protection.

If you are already running a business, your business name might be one of your most valuable assets and you should investigate protecting your business name by registering it as a trademark if you haven’t already done so.

Let’s examine the differences between registering a business name and registering a trademark for your business name.

Registering your business name

A business name is the name you use for your trading enterprise. It helps your customers to identify your business from others in the marketplace. If you are not trading as a sole proprietor under your own name, then you must register a business name as part of the company registration process. When you register your company with the New Zealand Companies Office, the first step is to reserve a company name. The Companies Office will then check whether that name is identical or very closely similar to existing company names and let you know if you can proceed with it.

It’s important to note that, just because a company name is available, that doesn’t mean you will be able to register your business name as a trademark. Different tests for the registrability of company names and trademarks apply.

Similarly, registration of your company name with the Companies Office does not automatically give you any right to prevent others from using a brand similar to your company name.

ONECheck is a government service you can use in advance of reserving your company name to compare the availability of business names among existing company names, trademarks and domain names.

Here are 9 tips for choosing a business name.

How to trademark a business name

If you’ve managed to register your preferred business name as your company name, nice work! However, registration of a company name doesn’t give you any exclusive rights to use that business name as a brand. You’ll need to start thinking about registering your business name as a trademark.

A registered trademark  gives you the exclusive right to use your brand for the goods and services you register it for, meaning you can prevent your competitors from using brands which are the same as or confusingly similar to yours.  You can file a trademark opposition to prevent new trademarks that are similar to yours from being registered, when necessary.

According to the Trade Mark Act, a trademark can be a number, name, phrase, logo or combination of these. Read more about the types of trademarks you can register for your business here: Trademark Definition

Since trademarks are registered for specific classes of goods and services, it is sometimes possible for two companies to own trademarks for the same name. For example, in New Zealand, one company owns the trademark Tip Top for bread and bakery products and another company has registered Tip Top trademarks for ice-cream products.

You can learn more about the differences between registered and unregistered trademarks and when to use the registered trademark symbol ® and when to use ™.

Tips for protecting your business name

Before you register a business name that you intend to trademark or have a logo designed, you should check that it is both distinctive and registrable. You should carry out trademark name searches to make sure no one else has rights in a similar business name or brand to avoid trademark objections.

When you apply for a trademark, it’s best to focus on protecting the really distinctive part of your brand.  If you’re registering your business name as a trademark, we recommend that you do not  include the words or abbreviations which designate the type of company, for example, LIMITED or LTD, INCORPORATED in your trademark business name.  These company descriptors are not the distinctive part of your brand and including them as part of your trademark registration may in fact limit scope of your trademark rights.

Similarly, if you want to trademark the name of your website, there is generally no need to include the domain extension such as .COM or .CO.NZ (unless it forms a distinctive part of your brand).

For example, the key distinctive part of the Coca-Cola Company’s business name is COCA-COLA and this is what it should protect as a trademark.  There is not really any need to separately protect COCA-COLA COMPANY or COCA-COLA.COM.

You should register the trademark in all the classes in which you intend to trade. Your registered trademark can provide protection for your brand indefinitely - provided that you pay the renewal fees (which in New Zealand are due every ten years).  If you want to protect your trademark overseas , you will need to separately register your trademark in each country in which you intend to trade or export your products.

How to get a trademark

Once you have decided upon a distinctive name and/or logo for your business, you can use DIY Trademarks’ quick and easy online trademark filing platform to apply to register your trademarks with the New Zealand IP Office (IPONZ).

Masterminded by experienced trademark lawyers and legal tech professionals, DIY Trademarks enables you to bypass the lawyers and the tedious logins to make the trademark application process a painless 4-step process.

Before you apply, check that you have all the information you need on hand. Once you have it ready, the online application process should only take a few minutes. Here is a summary of what you need with links to help you find it quickly and easily:  How to Get a Trademark