A trademark is a sign, mark, or indicator used by an individual, business, or organization to identity a product or service as its own and to distinguish the product or service from those of its competitors. A business name generally can be protected as a trademark under federal and state trademark law.
Trademark law is designed to avoid consumer confusion over the trademarks that businesses or other organizations use in connection with their goods and services. Stated briefly, trademark law makes it unlawful for a business to use a trademark (e.g., a slogan, a logo, a name) in connection with a good or service if that use is confusingly similar to another business's use of a trademark. To see how this works, imagine a consumer - Sally. If Sally buys a Dell computer, she can be pretty sure that the computer was made by Dell Computer and nobody else. She can take Dell's reputation into account without worrying that a knockoff company is making shoddy computers with the Dell logo on them because trademark law prohibits that kind of confusing commercial activity and it gives Dell the right to sue for money damages and an injunction if someone does it.
As a general rule, if someone in a similar field to yours is already using a particular business or organization name, you should not use it, nor should you use a name that would be confusingly similar. Traditionally, there was nothing to prevent someone from using a trademarked name in a completely unrelated field or industry (for instance, Delta Faucet and Delta Airlines) because there was no possibility that consumers would confuse one for the other. However, the emergence of something called "anti-dilution" law means that the owner of a "famous" trademark (it means pretty much what is sounds like) can prevent you from using it even in an unrelated industry. Therefore, it probably would not be a good idea to call a blog "Kodak News" or "McDonald'sBlog," unless your website is actually about Kodak or McDonald's (in which case you should read Using the Trademarks of Others section closely). Traditionally, the law also permitted multiple companies to use a given name in different geographical areas of the country, but the global nature of the Internet breaks down the importance of geographical isolation and makes it more likely that an Internet use of a name or trademark could be confusing regardless of where the brick-and-mortar businesses or organizations are physically located. Thus, you probably want to steer clear of a name that is the same or similar to a name used by someone else in your field, even if that person or organization is located far away from you.
The process of naming your business and securing trademark rights can be summarized in three basic points:
Choosing a distinctive name is important from a business perspective, but it is also important if you want trademark law to protect your business name. A business name is potentially a trademark protected by the law, but this protection depends on the type of name you choose.
As a general matter, the more unique or distinctive the name is, the greater trademark protection it receives. Fanciful marks (made-up words like "Kodak"), arbitrary marks (existing words used in a way unrelated to their normal meaning, like "Apple" for computers), and suggestive marks (those that hint at a quality or aspect of the product or service, like "Netscape") receive the highest level of protection. You can register these kinds of trademarks immediately, without any evidence of "secondary meaning" -- i.e., proof that, through your use of the name in commerce, the public has come to identify it specifically with your good or service. Similarly, in the event of a lawsuit, you would not need to produce evidence of secondary meaning in order to make out your case.
In contrast, a merely descriptive name can only receive full trademark protection after it acquires secondary meaning. Some examples include names that describe the product or service directly, such as Speedy Rental Car, or one that merely uses a person's name, such as Smith Computers or Jane's Collectibles. Terms that describe the geographic location of a good or service, like the New York Times, also are considered descriptive, and they can be protected as trademarks only upon proof that through use they have acquired secondary meaning. If you choose a merely descriptive name for your citizen media site or blog, you would not be able to register it at first, and you would not be able to successfully sue someone for using a confusingly similar trademark. You might be able to register it and/or bring a successful lawsuit at a later date, however, assuming that Internet users at some point come to identify your business name specifically with your work (i.e., it acquires secondary meaning).
Lastly, a generic name can never receive trademark protection. A generic name is identical to the product or service to which it attaches. For instance, calling a business that hosted email accounts "email" would be a generic name. Keep in mind that a term can be a generic name for one product or service, but a valid trademark for another. For instance, "Apple" is a generic name for selling apples, but a valid trademark for computers, and "Bicycle" is a generic name for selling bicycles, but a valid trademark for playing cards. Some geographical terms like "swiss cheese" and "French fries" are also generic because they are synonymous with the item itself. However, this does not mean that all geographical names are generic.
Choosing a business name presents a special problem for a community journalism site or blogger with a regional focus, where using a geographical or other descriptive term makes intuitive sense. After some thought, you may decide that the appropriate descriptive name is more important to you than strong trademark protection. Or, you may come up with a creative way of using a geographical term in a distinctive way (e.g., h2otown). Be aware also that your descriptive name may obtain secondary meaning should your site prove an influential and often-visited source of information -- think, for instance about the New York Times. So, keep in mind that you may start out with a business name that enjoys little protection under trademark law, but the amount of protection may grow over time.
Once you have chosen a business name, you should make sure that someone else is not already using it in a similar field. The easiest first step is to search an Internet search engine for your proposed name. If it is a common word that brings up a lot of results, add keywords relevant to your business or organizationto see if any similar enterprises have adopted the same name. If you see any other websites doing work similar to yours, you should consider choosing a different name. When you consider whether something is "work similar to yours," take a broad view. This could be anything from a journalism site, a blog, some kind of interactive web service, something tech-y with a heavy online presence, etc. There is little certainty in this area, and you will just have to do your best in making the call. The same goes for all the searching described below -- the task is to weed out names being used by people doing something similar to you, broadly construed.
Next, you should look in TESS, the federal trademark database. Search for the name you're considering as well as close or obvious variations. If anything comes up, check to see if it is "LIVE" or "DEAD." If a mark is canceled, abandoned, or expired ("DEAD"), it probably is safe to use it, but you should do a little extra research to make sure that the company is not still using it in reality. If there are currently registered marks ("LIVE"), look to see with what goods or services the registering company or person is using them. If the company or person is not doing something similar to you, broadly construed, you can probably use the name. However, if the name is famous (i.e., it's a household name like Google or Volkswagen or Prince), you should avoid it. Even if a court would not ultimately conclude that your use of the name constitutes trademark dilution, large companies with famous marks can be very aggressive in policing the use of their trademarks, and they are likely to have highly trained lawyers to make your life difficult. In any case, if you choose to use a name that someone else has registered in connection with a different kind of business, be sure not to use a similar logo, design, or color scheme.
Even after checking the federal database, you're still not necessarily in the clear. Each state and the District of Columbia has its own trademark registry. You can find out where your state's registry is at FindLaw's State Trademark Information page. States have their own trademark laws, which are generally similar to federal law and can be just as powerful if you are sued (or choose to sue someone else). You should perform a search for your business name in your own state and any other state in which you particularly expect to do business or become involved (beyond simply disseminating information to residents of a state via the Internet). To be completely thorough, you would have to search each state's database individually, which would be tedious and time-consuming. You can decide whether this is worthwhile. You can also pay an attorney or one of several Internet-based services to conduct a trademark search for you. FindLaw has more information on hiring a professional firm to conduct a trademark search.
Even if you find nothing through all of these searches, it is still possible that someone somewhere is already using the name you intend to use. This is true because federal and some state trademark laws protect unregistered trademarks, and there is no comprehensive list of all unregistered trademarks in use. The searches described above are the best you can do, and if they turn up negative, the chances that you will run into trouble are greatly reduced.
You are not required to register your business or organization name as a trademark, but doing so offers two major advantages: (1) it puts others on notice that you are using the name, so new businesses do not adopt it by accident; and (2) in the event of a lawsuit, it makes your case much stronger because your trademark rights are clearly established once you register. You do not need to register the mark before you start using it. While the federal system gives that option through "intent-to-use" applications, your state may not, and if you are ready to start using the name there is no advantage to waiting for registration.
Once you have decided to register your business or organization name, and preferably actually taken at least some concrete steps toward using it, you should file the necessary forms to register it in your state and/or with the US Patent and Trademark Office (USPTO). Registration is not free (federal registration costs at least $275, and as an example, registration in Massachusetts starts at $50) and may be subject to certain limitations or requirements, such as actually using the trademark in connection with goods or services. Federal registration is the most powerful, since it presumptively applies throughout the country and is most likely to be noticed, but a state registration still provides greater rights than if you do not register your mark at all and makes it likely that a new business will discover your use of the name.
State procedures vary. You should contact your state authority responsible for trademark matters for details.
You can apply for a federal trademark registration online. The USPTO estimates that filling out the form should take about 15-20 minutes. A federal application must contain at least four things, in addition to the filing fee: your name, your address, a clear drawing of the mark (which can be automatically generated from text if you do not have a logo), and at least one category of goods or services in which the mark is or will be used. Alternatively, you can file a much more detailed application and receive a discount on the filing fee. You can choose more than one product, service, or industry for your trademark, but you must pay the filing fee for each one. The USPTO has predefined categories of products and services that they strongly suggest you use, but you can also type in something else if your product or service does not fit in its categories. You may want to consider filing for more than one category. If your business is not clearly confined to one area, doing so would give you flexibility to expand into new products or services in the future. On the other hand, aside from the added filing fees, the downside to doing so is that you are more likely to conflict with someone else who is using the mark or a similar one in another field or industry. Furthermore, if you do expand in the future, you can apply for a new registration (unless someone else has already registered the mark in that area in the meantime).
After you file the registration forms with the USPTO, within about 3-6 months a USPTO attorney will examine and research your application. There are several categories of marks that the USPTO will refuse to register, including "immoral, deceptive, or scandalous" marks (such as including foul language), those that disparage or falsely imply a connection to other people (the Washington Redskins are in danger of losing their trademark registration over this), and marks that are confusingly similar to others that are already registered. The USPTO attorney may contact you to resolve any issues in your application. If the USPTO approves your application, it will publish your trademark in its Official Gazette, and anyone who is already using the mark may oppose the registration. If no one opposes within thirty days, the USPTO will register your mark. All told, the process can easily take 1-2 years, but once it is approved your rights date back to the day you filed your application. You will need to renew the registration every 6-10 years to indicate that you are still using the mark.
If this process sounds very involved to you, you can also hire an attorney to do it. Trademark registration is usually fairly straightforward for attorneys who specialize in it, so it is relatively inexpensive.