bg_image

What are different types of names? Company name vs business name vs domain name vs trademark?

What is the difference between company name, business name, domain name and brand or trademark?

What are different types of company, domain, business or brand names? Let’s get the names straight to avoid confusion.

  • Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).

Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name

  • Business name or doing business as: Name under which you conduct your business.

Example: Microsoft

Example: Skype

  • Domain name: Name of your address on the Web.

Example: www.microsoft.com

Example: www.skype.com (Microsoft owns Skype)

  • Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.

Example: MICROSOFT, , or a combined mark:

Example: SKYPE,

Let’s take another example of a giant retailer Kraft Foods.

Company name: Kraft Foods Inc.

12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House,  Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.

For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.

Not everyone knows that these 12 famous brands are owned by the same giant! It doesn’t really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!

Do I need to register a trademark if my business incorporated?

If you simply business incorporate or register a corporate name, it doesn’t mean that the government approved for you to use the name as a trademark.

If we take a US LLC, as an example, every state has its own laws about business names.

You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.

In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.

Do I have to use my trademark in the US prior to filing? Do I have to use my trademark after registration?

In the US, use is not required prior to filing. However, a trademark must be put to use prior to registration unless a foreign applicant relies on a foreign registration as the filing basis. To register a trademark one must file a Statement of Use together with specimens of use.

Use is mandatory after registration. In fact, a mandatory Affidavit of Use must be filed between the 5th and the 6th year after registration. If no affidavit is filed, the trademark is cancelled automatically.

In addition, trademarks that are not in use after registration may be cancelled by filing a petition to cancel.

Can I use my trademark if it isn’t registered?

It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.

To minimize the risk of choosing a trademark that’s similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand  and of the marketplace (check on Internet for similar names usage).

How long is a trademark opposition process?

In different countries trademark opposition process is different.

In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.

A trademark opposition in Brazil may be filed by an interested party within 60 days from the date of its publication.

In Canada, Australia and New Zealand one has to file a trademark opposition within a 2-month period.

A trademark opposition in South Korea may be filed by an interested party within 2 months from the date of its publication.

In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.

A trademark opposition in Japan may be filed by an interested party within two months from the date of its publication. Trademarks are published twice, first time right after filing and second time after registration.

In Germany, publication happens after registration. Opposition period is 3 months.

In the European Union and China, a notice of opposition must be filed within 3 months following the publication.

In India, anyone may oppose registration of an Indian trademark within 4 months after publication.

What is the difference between State and Federal Trademarks?

Trademarks may be filed at the state or federal level.

State trademarks protect your mark in a specific state while federal trademarks protect your mark in all the states.

State trademarks generally provide less legal protection than federal trademarks.

Businesses operating in only one state should trademark in that state. Businesses operating in interstate commerce may file for a federal trademark.

For example, if you operate a restaurant or a hair-dressing salon in Florida, you are not eligible for a federal trademark. In this case, you should apply for a trademark in the state of Florida. However, if you have two or more restaurant locations in more than one state, in our case, one in Florida and one in Georgia, you are eligible for a federal trademark.

A business intending on expanding nationally or internationally should conduct a trademark search and file a federal trademark as soon as possible.

How long are trademarks valid for?

Trademarks can last forever if they are renewed on time. Keep in mind you will have to continue using your trademark to keep it in good standing.

In the US, you must renew your trademark every 10 years. The 10 year term is counted from the registration date. In addition, between the 5th and 6th year after the registration date, you must file an “affidavit of use” to keep the registration alive.

In European Union, Germany, the United Kingdom, India and Australia, you have to renew your trademark every 10 years. The 10 year term counts from the application date.

In China, trademarks have to be renewed every 10 years. The renewal period is counted from the date of registration.

In Canada, a trademark has to be renewed every 10 years (the renewal period was changed from 15 to 10 years in June of 2019). The 10 year term counts from the registration date.

 

How long does it take to register a trademark?

Here we rank the countries where we file from the fastest to the slowest.

1. Germany is the fastest country and overall champion. It takes 1-3 months, on average to register a trademark in Germany. With accelerated examination, most trademarks register within a month. So this is a clear champion in terms of speed. Sometimes Germany can be a little unpredictable as it can take a month for one trademark and 3 months for another trademark.

2. One of the fast and most predictable in terms of timeline is the United Kingdom, where it takes about 3.5-4 months from filing to registration. Added bonus is low government fees.

3. In the European Union, the registration process is about 6-7 months. Not so bad, but the government fees are very high. If your application is filed using “fast-track” method, then the whole process takes about 3.5-4 months. We always EU applications using “fast-track” so European Union is very comparable to the UK (maybe a little slower).

4. It takes about 4-8 months to register a a trademark in Mexico but it can be somewhat inconsistent in terms of the time (sometimes it takes 4 months and sometimes more than 8 months).

5. You will have to wait for about 7.5-8 months to register a trademark in Australia unless we get an objection. Usually most trademarks register within a year or less.

6.  In China, it takes 9-12 months to register a trademark if there are no complications. However, if there is an objection and we have to appeal, registration will be delayed by 8 months. China is determined to make the overall registration process faster, so it’s possible that in 2020 this timeline will be shorter.

7. India is similar to China in terms of timeline. On average it takes 10 months to get a registration certificate if there are no problems during the process.

8. It takes a minimum of 12-14 months to register trademark in the US. If there are office actions (objections from the Trademarks Office), then registration will be delayed. It’s not uncommon for a registration to take a year or longer.

9. In Japan, it may take from 10 to 14 months for a trademark to register.

10. In Brazil trademark registration process takes on average 12-18 months. It’s a pretty long time.

11. The last place is unfortunately taken by Canada. It takes 36-42 months to finish the registration process. If there are objections the overall registration process takes even more time. It’s painfully slo-o-ow. Don’t ask us why. We don’t know the answer. We feel your pain though. Hopefully, as Canada joined Madrid protocol things will improve. We don’t know if and when they will improve. Ever since pandemics began the whole process delayed even more (other countries haven’t been affected so badly).

 

 

 

 

What is a specimen of use?

A specimen of use is an example of how your trademark is used on goods and services in the marketplace. Goods means products.

To show use for goods, your trademark should be affixed/attached on the actual product or packaging of the product. A photo, mockup or drawing of the mark is not enough.

A person can submit tags, instruction manuals, containers, labels, or packaging materials. It may be the easiest to take a photo of your product and/or the packaging and ensure that the trademark is clearly visible.

Advertising materials are generally not acceptable as a specimen for goods.

If you offer services, the easiest way to prove use is to provide a screenshot of your website so that the trademark is clearly visible in the website header. You can also provide flyers, directory listings, and brochures. A business card or a photos of your business signage could be an acceptable specimen of use for services if the card displays your trademark along with the services the mark is associated with.

It is important to submit the right specimens of use in order to avoid trademark refusal. If you are not sure which specimens will be acceptable, call Trademark Angel.

How do I find an acceptable specimen of use?

In this video, we will discuss some examples of acceptable specimens of use for your trademark application.

First, we’ll discuss acceptable specimens for products.

A photograph of the product showing the mark the actual product.

Examples: metal plate on a bag or wallet; barbecue grill.

Packaging of the product showing the mark.

Example: tissue boxes; packaged fruit or vegetables; packaging for a toy.

Signage used in a product display in a store.

Example: Photograph of the physical product display.

Product labels and tags showing the mark.

Example: inside label of a t‐shirt; hang tag on a blouse or pants.

A Internet page showing the product near the mark and together with purchasing information.

Example: a website page shows a photograph of headphones, the mark for the headphones appears above the photograph, the price appears below or next to the photograph, and a shopping cart button or other way to purchase the headphones appears on the page.

If your product is downloadable software, you can prove use by showing copies of the instruction manual and screen printouts from the actual program that shows the mark in the title bar, or launch screens that show the mark in an introductory message box that appears after you open the program. A web page showing the mark in connection with the information sufficient to download the software will also be acceptable.

A specimen for services generally shows the mark used in the sale or advertising of the services. A customer should be able to associate your trademark with your services on the specimen.