Trademark Attorney for Small Business

No. State business name registration and trademark registration are separate systems. Registering a business name with a state is not a trademark registration and does not, by itself, prevent another party from applying to register the same name as a federal trademark (15 U.S.C. § 1051).

A DBA (doing business as) registration is a business registration that allows you to operate under a trade name that is different from your legal entity name. It is a local filing, not a trademark registration. In California, for example, filing a fictitious business name statement creates a rebuttable presumption that the registrant has the exclusive right to use the name as a trade name in that county, if it is the first to file that name there and is actually doing business under it (Cal. Bus. & Prof. Code § 14411). A federal trademark registration on the Principal Register is prima facie evidence of the owner's exclusive right to use the mark in commerce for the goods or services specified in the certificate, subject to any conditions or limitations stated in it (15 U.S.C. § 1057(b)), and the registrant can bring a civil action against use in commerce of a copy or colorable imitation of the registered mark that is likely to cause confusion (15 U.S.C. § 1114(1)).

The best time to file is before the business grows large enough to attract copycats, not after a conflict has already appeared. Practically, filing makes sense when the business has a name it intends to keep, has been operating for at least a short period under that name, and is generating consistent revenue. Waiting until the business is large creates two problems: the window to file first narrows as competitors have more opportunity to file similar names, and the cost of a rebrand if the name is challenged grows with the size of the business.

Two businesses may use the same name in different geographic markets: common-law rights are based on use of a mark within a particular geographic area, and infringement under the Lanham Act requires a use that is likely to cause confusion (15 U.S.C. § 1125(a)(1)(A)). If one business files a federal application and the mark registers on the Principal Register, the filing date counts as nationwide constructive use of the mark for the registered goods or services, except against anyone who has not abandoned their mark and who, before that date, had used it, had filed a US application for it that is pending or registered, or had filed a foreign application giving a right of priority and then timely filed a US application that is pending or registered (15 U.S.C. § 1057(c)); if that registration has become incontestable under 15 U.S.C. § 1065, the other business's prior-use defense applies only if it adopted the name without knowledge of the registrant's prior use and the name has been used continuously by it, or by those in privity with it, from a date before the applicable statutory date (the registrant's constructive-use date under 15 U.S.C. § 1057(c); its registration date, if its application was filed before the Trademark Law Revision Act of 1988 took effect; or the date its registered mark was published under 15 U.S.C. § 1062(c)), and only in the area where that continuous prior use is proved (15 U.S.C. § 1115(b)(5)); a registration that has not become incontestable does not preclude the other business from proving any legal or equitable defense or defect that could have been asserted if the mark had not been registered (15 U.S.C. § 1115(a)).

Whether a local-only business with no plans to expand and no online sales needs a federal registration now is a business decision. We recommend considering an application early if the business name is distinctive enough to be worth protecting, because if the mark registers on the Principal Register, the filing date counts as nationwide constructive use, subject to the exceptions in 15 U.S.C. § 1057(c) for earlier users and applicants. We also recommend considering it if the business sells online, since online sales can reach customers in markets where others may use a similar name.

A slogan or tagline can be registered as a trademark if it functions as a brand identifier rather than just a motivational or descriptive phrase. The USPTO refuses slogans that are merely informational, merely descriptive of the product or service, or too commonly used in the industry to identify a single source. A tagline that is distinctive, used consistently across marketing materials, and associated in consumers' minds with your specific business has the best case for registration.

If a competitor files a federal application for your business name before you do and the mark registers, the registration is prima facie evidence of their exclusive right to use the mark for the registered goods or services (15 U.S.C. § 1057(b)), but its filing-date priority does not apply against you if you used the name before their filing date and have not abandoned it (15 U.S.C. § 1057(c)). Within five years of the registration date, you can petition the Trademark Trial and Appeal Board to cancel the registration on the ground that the mark is likely to cause confusion with a mark you previously used in the United States and have not abandoned (15 U.S.C. §§ 1052(d), 1064(1)); this is a formal proceeding, and a date of use must be established in it by competent evidence (37 C.F.R. § 2.122(b)(2)). We recommend filing early.

A Principal Register registration supports refusal of a later application for a mark that so resembles yours as to be likely to cause confusion when used on the applicant's goods or services (15 U.S.C. § 1052(d)), and a claim against use in commerce of a copy or colorable imitation of your registered mark that is likely to cause confusion (15 U.S.C. § 1114(1)), including by franchise concepts in your industry. Whether a use infringes depends on likely confusion, not on class numbers, which exist for USPTO administration and do not limit or extend rights (15 U.S.C. § 1112). Without a registration, a franchise competitor could file a trademark application for your name; if it registers, its filing date counts as nationwide constructive use, subject to the exceptions in 15 U.S.C. § 1057(c) for earlier users and applicants. If you license the mark to franchisees, their use benefits you as the owner of a registered or applied-for mark when you control the nature and quality of the goods or services they offer under it, provided the mark is not used in a manner that deceives the public (15 U.S.C. §§ 1055, 1127).

Yes. I file USPTO applications in the United States and CIPO applications in Canada; Canadian examiner's reports, oppositions, and section 45 proceedings are handled through a licensed Canadian trademark agent. The two registration systems are separate; one registration does not automatically produce the other. A US registration does not itself create a Canadian registration, or vice versa; rights from prior use must also be considered. For businesses that operate or sell in both countries, the filing plan should account for prior use, filing dates and valid priority claims in each market.

USPTO base fees for electronic applications under Sections 1 and 44 are US$350 per class. A single-class trademark application with our representation is $2,995 in legal fees (Brand Locked), plus the USPTO filing fee. Multi-class applications or applications covering both goods and services categories cost more. Canadian CIPO registration adds to the total for cross-border coverage. I quote a flat fee before any work begins so you know the cost before committing. Additional government fees may apply.