How to Choose and Trademark Your Brand
Choosing and trademarking your brand involves carefully ensuring uniqueness, appeal, and legal protection. First, brainstorm ideas for your brand, keeping in mind your target audience, brand message, and industry.
Research each idea to avoid potential infringement of existing trademarks. Once you’ve settled on a unique brand, submit a trademark application with your national patent office, providing all necessary details and fees. Remember, the trademark registration process can take time, and it’s advisable to consider getting a lawyer to help navigate the legal complexities.
After registration, periodically monitor your trademark to prevent unauthorized usage and maintain its distinctiveness. In this article, I’ll cover all of the above in detail.
Table of Contents
Picking a Name for Your Pizzeria
Relevance to your concept
Ensure that the name reflects the nature of your business. Since you are running a pizzeria, the name should ideally convey that it’s a pizza-focused restaurant and use your sub-naming to promote the vibe or second most important product or service being offered. (e.g. Billy Bricks is our brand but our naming convention is Billy Bricks Pizza & Ice Cream or our other brand ZZA BABY Pizza Bar where we have a full service bar).
Memorability
A catchy and easy-to-remember name is essential for attracting customers. Avoid overly complex or confusing names that might be hard for people to recall.
Uniqueness
You want your pizzeria to stand out from the competition. Choose a name that is distinct and not too similar to other existing restaurants in your area. This is also crucial for Number 9 below.
Avoiding negative connotations
I’d recommend ensuring that your name does not have any unintended negative meanings or associations that could put off potential customers. However, depending on your market and your concept, that may be part of your concept and would be “on brand.” But, I’d recommend thoughtfully considering Number 5 below.
Consider the Target Audience
Think about your target demographic and what would appeal to them. A family-oriented pizzeria might have a different name from a trendy, upscale pizza place, and this should be based on the area you’re in and your menu (service style, options, pricing and plating).
Local relevance
Consider using a name that has some local connection or significance, as it can create a sense of community and appeal to local customers.
Ease of Spelling and Pronunciation
Avoid names that are difficult to spell or pronounce, as this can lead to confusion or make it harder for customers to recommend your pizzeria to others.
Scalability
If you plan to expand your business in the future or offer more than just pizza, consider a name that won’t limit your options. Numbers 9, 10, & 11 below are vitally important if your pizzeria is something you’re looking to scale outside of a single location.
Trademark Clearance
Do a thorough search to ensure that another business does not already trademark the name you want to use. You don’t want to face legal issues down the road. (More on this later). Once you have “clearance” on a name you like, begin to check on Numbers 10 & 11 If all seems clear, then work with an attorney (like me) to provide full clearance and file your intent to use application with the USPTO. If you’ve already been operating, you can still file, but a full clearance search to see if publication to the principal register is likely.
Domain availability
In this digital age, having a website is essential. Check if the name you want is available as a domain to secure an online presence.
Social media presence
Check if the name is available across major social media platforms, as consistency in branding is essential.
There are tools available for both of these checks. I use domainr and namecheckr.
Remember that the name of your pizzeria is an important part of your brand identity and writing your brand story, so take the time to choose wisely and consider how it aligns with your overall vision for the restaurant.
Register Your Pizzeria Name For Trademark Protection
Although I would strongly encourage anyone to consider the likelihood of obtaining a trademark prior too choosing it for their pizzeria, once you have picked a name for your pizzeria, here are some important steps and factors to consider when filing and registering a trademark with the United States Patent and Trademark Office (USPTO):
SIDE NOTE: READ EVERYTHING CAREFULLY AND ATTEMPT TO UNDERSTAND THIS PROCESS FULLY. HOWEVER, YOUR BEST BET IS TO FIND A TRADEMARK ATTORNEY, HOPEFULLY ONE THAT WILL AGREE TO FLAT FEES FOR THIS TYPE OF WORK (LIKE ME). YOU CAN SEARCH FOR A TRADEMARK ATTORNEY BY REFERRAL OR LOOKING UP WHO FILED SIMILAR TRADEMARKS IN THE USPTO.
Trademark Search:
Conduct a comprehensive search before filing for a trademark to ensure that your chosen name is not already in use or registered by another business. You can search the USPTO’s Trademark Electronic Search System (TESS) database and conduct a broader search to check for unregistered trademarks and common law usage. Keep in mind, just because you didn’t find issues within TESS, doesn’t mean a trained IP attorney wouldn’t. Save yourself time, money and aggravation by working with someone from the beginning to ensure a clean process rather than a cleanup job.
Trademark Eligibility:
Ensure that the name you’ve chosen is eligible for trademark protection. Generic terms and names that merely describe the product or service are generally not eligible (See prior post back link to point 3) . Your chosen name should be distinctive enough to distinguish your pizzeria from others in the marketplace.
Identifying the Goods and Services:
Clearly define the goods and services associated with your trademark. In this case, it would be restaurant services, specifically a pizzeria. Be specific and accurate in your description.
Preparing the Application:
To file for a trademark, you must submit a trademark application to the USPTO. The application can be filed online through the Trademark Electronic Application System (TEAS). You’ll need to provide information about your business, the trademark itself, and the goods/services associated with it.
Basis for Filing:
You’ll need to choose the appropriate basis for filing the application. The most common options are “use in commerce” (if you are already using the name in connection with your pizzeria) or “intent to use” (if you haven’t yet used the name but have a bona fide intention to use it in the future).
Specimen and Drawing:
Include a specimen of how the trademark is being used in commerce (e.g., signage, menu, or marketing materials) and a clear drawing of the mark itself.
Filing Fees:
Pay the required filing fees. The amount will depend on the filing option you choose and the number of classes of goods/services your trademark will cover.
Examination Process:
After submitting the application, it will go through the examination process at the USPTO. This used to be ninety (90) days or so, now it’s “about” six (6) months. Not hearing something for a long time does not necessarily mean anything is wrong. This process involves a review of your application to ensure it complies with all legal requirements and that there are no conflicting marks. If the examiner does find issues with your application and/or mark, this is where complete panic would set in had you not worked with an attorney prior to this point. Often times, an attorney will recommend abandoning that application and refiling a clean doc which will cost you more time and money. Do it right from the start.
Publication for Opposition:
If the examining attorney approves your application, it will be published in the USPTO’s Official Gazette. During this time, other parties have an opportunity to oppose your registration if they believe it may cause confusion with their existing trademarks.
Registration:
If no opposition is filed or successfully resolved, and your application meets all requirements, the USPTO will issue a trademark registration certificate for your pizzeria’s name.
The process of obtaining a trademark can be complex, and it’s recommended to seek legal counsel from a trademark attorney to ensure that your rights are protected and the application is properly filed. The USPTO website (www.uspto.gov) also provides detailed information and resources on the trademark application process.
On-going Maintenance and Protecting Your Pizzeria Trademark
Congratulations, you have a registered trademark and a nice piece of paper to frame! After obtaining a registered trademark for your pizzeria name, it’s essential to take proactive steps to protect and monitor your mark to safeguard your rights, after all, you just invested a lot to get to this point. Here are some actions you can take:
- Usage Guidelines: Establish clear guidelines on how the trademark should be used in all branding and marketing materials. Ensure that all employees and business partners are aware of these guidelines to maintain consistency and avoid improper usage. (e.g. create a Brand Guidelines document.)
- Enforcement Policy: Develop an enforcement policy to address any unauthorized use of your trademark. This may include sending cease and desist letters to infringing parties, taking legal action when necessary, or working with a trademark attorney to handle infringement cases. Just be aware, making “empty threats” to enforce can sometimes be worse than doing nothing at least in the short term. However, IP rights can be “use it (enforce it) or lose it.”
- Monitor Trademark Databases: Regularly monitor the USPTO’s trademark database and other global trademark databases to check for new applications or registrations that could potentially infringe on your mark. You can also use online brand monitoring services to track unauthorized use of your mark on the internet and social media. But, let’s be honest, you’re not going to do this, you can keep your attorney on this or set up an account in TESS to send you alerts.
- Watch Services: Consider using a trademark watch service, which can alert you to any potential trademark infringement by monitoring new trademark applications and registrations. This is a nice alternative to paying an attorney, but still, an added expense. One way to do this at a basic level is to set up google alerts on your name.
- Brand Monitoring Online: Keep an eye on the internet and social media platforms for unauthorized use of your trademark. Address any instances of infringement promptly.
- Renewal and Maintenance: Trademarks require periodic maintenance and renewal. Stay on top of the renewal dates to ensure your trademark remains valid and enforceable. I may have said this before, but I’ll say it again, keep an attorney close, they’ll monitor this and be your attorney of record so you don’t miss anything.
- Educate Employees: Train your employees about the importance of protecting the trademark and the proper use of the mark in their interactions with customers and the public.
- Record Keeping: Keep detailed records of how your trademark is being used and the steps you take to protect it. These records can be essential in case of any legal disputes.
- Coexistence Agreements: In some cases, you may encounter situations where a similar trademark exists, but there is no direct conflict. In such instances, you can consider entering into coexistence agreements with the other trademark owners to avoid potential disputes. However, as a strategy, I wouldn’t initiate this process. You shouldn’t have this come up if you’ve followed the steps I’ve laid out previously.
- Defensive Trademarking: If your pizzeria’s name becomes very successful, consider registering the trademark in additional classes or expanding its coverage to protect it from potential future competitors.
- Global Protection: If you plan to expand internationally, consider seeking trademark protection in other countries where you may operate.
Protecting a trademark is an ongoing process, and prompt action is crucial if you discover any potential infringement. Consult with a trademark attorney to ensure you take all the necessary steps to protect your mark effectively.
Ric Gruber Jr. is the Owner @billybrickshq @zzababyhq @moojoesicecream. Attorney licensed in IL & CA. Co-Founded @BrandlessHQ @venturefwdio @fundconference you reach him over at https://www.pizzaric.com/