How to Trademark a Business Name: The Complete 5-Step Guide

Are you wondering "How can I trademark a business name?" or "How do I file a trademark application?" You're in the right place. This comprehensive guide breaks down the trademark process into five manageable steps that anyone can follow.

1. Confirm Your Name Is Registrable

Not every name qualifies for trademark protection. First, ensure your name is inherently distinctive, ideally made-up, arbitrary (real word used in an unrelated context), or suggestive (hints at qualities). Avoid generic or plainly descriptive terms (e.g., "Fast Pizza").

Then conduct a multi-jurisdictional search (USPTO TESS, EUIPO eSearch, WIPO Global Brand Database) to uncover identical or confusingly similar marks. Early clearance reduces the risk of objections or opposition later on.

💡 For a deeper dive into conducting effective trademark searches, check out our guide on how to find out if something is trademarked.

Understanding Priority Rights

If you're planning to file in multiple countries, priority rights can be your strategic advantage. When you file your first trademark application anywhere in the world, you have a 6-month priority window to file in other countries.

These subsequent applications will be treated as if they were filed on your original filing date, potentially beating competitors who filed after you but before your international applications.

Why this matters: Most countries operate on a first-to-file basis. If someone tries to register your mark while you're expanding internationally, claiming priority from your first application can establish that you were legally first, even if their actual filing date preceded yours.

Requirements for claiming priority:

• Must use your first-ever filed trademark
• Must be claimed within 6 months of the original filing
• Only the original owner can claim it
• Can only cover identical marks and the same goods/services classes

2. Choose Your Goods & Services Classes

Trademark rights are defined by the "shelves" (classes) where your mark lives.

• Inventory thoroughly: List every product and service you currently offer and those planned within the next few years.
• Map to Nice classes: Use official tools like TMclass, or try our free Nice Classification Tool to match each offering to its class number and approved wording.
• Craft precise descriptions: Examiners reject vague or overly broad listings. Instead of "software," specify "mobile fitness tracking software."

Accurate class selection ensures you aren't under-protected (leaving gaps) or over-paying for unnecessary coverage. If you're new to trademark classes, our detailed explanation on what is class in trademark explains the system thoroughly.

Can You Register for Goods You Don't Offer Yet?

In most jurisdictions, yes: you can register for goods or services you plan to offer in the future. This protects your expansion plans. However, be aware that if you never actually use the trademark for certain registered goods or services, third parties may challenge those unused portions after a few years (timeframes vary by country).

Important exceptions: Some countries require proof of use or declarations of use to maintain registration validity. These include the United States, Philippines, India, Puerto Rico, Haiti, and Mozambique. Requirements and deadlines differ by jurisdiction.

💡 Filing in the USA? The USPTO has specific specimen requirements to prove use. Learn more about USPTO trademark specimen requirements and Statements of Use to ensure your application succeeds.

3. Prepare & File Your Application

With your name and classes settled, gather the essential information:

Required Information & Documents

Every trademark application needs:

• Your mark: The name/text, or an image file if your trademark includes a logo or design
• Owner details: Full legal name, entity type (if a company), complete address, and in some countries, a certificate of incorporation or passport copy
• Class numbers and descriptions: The specific goods/services lists you prepared in Step 2
• Local representative: In many countries, you'll need a local trademark agent or attorney

Power of Attorney Requirements

Whether you need a Power of Attorney (POA) depends entirely on the country. Requirements range widely:

• No POA needed: Australia
• Simple signed scan: South Korea, China (with passport/incorporation certificate)
• Original by mail: Indonesia
• Notarized original: Costa Rica
• Notarized + legalized: United Arab Emirates

💡 With iGERENT, when a POA document is needed, you will receive a template with clear instructions on how it must be filled out along with instructions regarding notarization or legalization requirements, if relevant.

Submitting Your Application

1. Complete the application form on your national IP portal (e.g., USPTO's Trademark Electronic Application System, EUIPO's e-Filing).
2. Upload your mark representation. For logos, decide whether to claim specific colors (more on this below).
3. Provide a specimen showing real-world use, such as a label, website screenshot, or brochure (if required by your jurisdiction).
4. Pay the required fees, which vary by jurisdiction and number of classes.

If you plan to expand abroad, consider an International application through the Madrid System to designate multiple countries in one filing.

Color vs. Black-and-White Logos

The decision depends on your jurisdiction and whether color is central to your brand identity. In some countries, submitting in color automatically claims those colors; in others, you must explicitly declare your claim.

General recommendation: File in black-and-white to retain flexibility in using any color combination. Exception: If specific colors are the most recognizable feature of your mark (think Tiffany blue or Coca-Cola red), claiming color provides stronger protection.

Should You Disclaim Generic Terms?

If your trademark combines distinctive and generic elements (like APPLE COMPUTER), you may need to disclaim exclusive rights to the generic portions. This means you own the complete mark but acknowledge others can use "computer" for computer products.

Countries requiring disclaimers include: United States, Canada, Australia, Malaysia, Philippines, South Africa, Thailand, Kuwait, and several others. Some offices automatically disclaim generic terms; others require disclaimers only after initial refusal.

4. Navigate Examination & Publication

After filing, an examiner reviews your submission:

• Office actions: You may receive formal objections (e.g., "descriptive" refusal) or requests to refine your description. Respond carefully and promptly: deadlines typically run 2–3 months.
• Publication: Once preliminarily approved, your mark is published in the public gazette. Third parties then have a window (often 30 days) to file oppositions.

Successfully overcoming these stages leads to registration; missing deadlines or inadequate responses can abandon your application.

How Long Does Registration Take?

Timeframes vary dramatically by country. Straightforward applications without objections or oppositions can be:

• As fast as: 2 weeks (Lebanon)
• Average: 6–12 months (most jurisdictions)
• As long as: 2 years (Indonesia)

Can You Accelerate the Process?

Most countries don't offer expedited examination, but some do for additional fees:

Countries with fast-track options: Australia, Austria, Belarus, Benelux, European Union, Georgia, Germany, Italy, Kosovo, Lithuania, Norway, Serbia, Spain, Switzerland, Ukraine

Important caveat: In jurisdictions like Germany and Benelux, accelerated registration publishes your mark after formality checks but before substantive examination. Your mark could still be refused or opposed after registration.

5. Receive Registration & Enforce Your Rights

Upon clearing oppositions, you'll receive a registration certificate confirming your exclusive rights:

• Begin using the ® symbol to deter copycats.
• Monitor marketplaces and trademark registers for infringers.
• File renewals (commonly every 10 years) and any required proofs of use to keep your mark alive.

While unregistered (common-law) use grants limited local rights, only formal registration secures nationwide and potentially international protection.