It is a common mistake to confuse the need for business entity formation with trademark registration.
When launching a new enterprise or product-line, this is an understandable mistake. This is especially true if you are a new or first-time entrepreneur. However, it is important to bear in mind that, while both steps are vital for your new business, they are separate processes.
Trademark registration is not required to conduct business. At the same time, you can successfully register your catchy business name with the State of Michigan (or whatever state you are operating within) without legally “protecting” that name, either.
This Article will discuss the legal differences between business formation and trademark registration. It will also explore the requirements for the successful registration of your business or product name, slogan, or logo as a trademark.
It will finally address the subject-question: Can you register a trademark without forming a company at all? Would you want to?
What Is Trademark Registration vs. Business Formation
Trademark registration is how you protect and give value to your brand. This is something that simply registering your business will not accomplish.
What’s the difference between forming a company and trademark registration?
Company Formation: Michigan or State Name Reservation Only
When you form a company in Michigan and in most other US states, you are filing paperwork with the Secretary of State to elect an entity type (LLC, PLLC, Corporation, S-Corp, etc.) and to reserve the name.
Reservation of an entity or corporate business name at the state level simply prevents anyone else in Michigan or another state from forming an entity with that same name. It doesn’t do anything else.
You can, in Michigan, operate a business without forming a separate legal entity, by the way. Sole proprietorships and general partnerships are these sorts of “non-corporate businesses.” Forming a company of those sorts generally only requires that you file a document with your County office to create an Assumed Name record that will enable you to, among other things, open a bank account under that business name.
Taking these steps does not mean that you have “protected” your business or product name from use by another company or person in another state selling the same or a related product or service.
You have created a business through which you might earn profit—but you have not protected your brand.
Business entity formation is a process that occurs entirely within the State of Michigan (or other US state) and which has no effect outside of the boundaries of the state.
US Trademark Registration: National Name and Logo Brand Protection
Federal trademark registration, on the other hand, is, obviously, a Federal, or national, process that will protect your company name from use by others or from infringement anywhere in the United States.
A trademark is registered not by filing anything with the State of Michigan (etcetera) but with the US Patent and Trademark Office (USPTO) in Washington, DC.
It is a legal process in which you first ensure, with the help of an experienced trademark attorney, that your proposed business or product name or logo is:
- Not already registered as a trademark by someone else;
- Is available for your use generally in US commerce; and
- Is not merely descriptive or otherwise unregistrable as a trademark.
A US trademark registration will provide the following legal benefits:
- Gives you the right to exclusive use of the name or logo across all 50 states;
- Enables you to sue for trademark infringement in US Federal Court;
- Enables you to request that US Customs block the import of infringing “knock-off” goods;
- Allows you to use the ® registered trademark symbol in your advertising and marketing;
- Provides public notice of your exclusive right to use the name or logo on the USPTO trademark register.
Simply filing paperwork with the State of Michigan to create an LLC under a certain name does none of these things.
Still, a US trademark registration is not a license to conduct business. You can launch your business without a trademark registration.
However, you cannot register a trademark without using it in business first.
Trademark Registration Use In Commerce Requirements
US trademark registration requires that you actually use the business name or logo “in commerce.”
This refers to the “use in commerce” requirement that any Federal administrative agency has for jurisdiction over a matter. If you are only using your name within the State of Michigan, for example, the USPTO has no jurisdiction over it.
But neither can it confer the protects guaranteed under the US Trademark (Lanham) Act, either.
In order to obtain the benefits listed above, you must be using your business name or logo across state lines.
This means that, if your company is formed in Michigan, your marketing and advertising efforts must reach across the southern border into Ohio, Indiana, Illinois—or any other US State. (And, naturally, those marketing efforts must actually use the name or logo!)
You can file a US trademark application either after you have begun using your business name or logo “in commerce” or afterward, however.
If you file your trademark registration application after beginning use in commerce of the name or logo, you must include with your “in-use” application what is known as a “Specimen.” This is evidence of your use in commerce.
What that evidence is depends on whether you are selling a product or a service, and what type of produce or service. It may be a photograph of your product packaging, or it may be a screenshot of, for example, your trademark law firm website.
A good trademark attorney will assist you with the creation and proper filing of a Specimen of Use with the USPTO.
If you file your trademark registration application prior to using the business name or logo in commerce, this is known as an “intent-to-use” application.
In this sort of trademark registration process, you can have the name and logo approved for registration—but it will not be actually registered until, later in the process, you finally file a “Statement of Use” with a Specimen attached.
Who Can Register a Trademark?
That all said, can you register a trademark if you haven’t yet formed a company or registered your business with the State of Michigan?
The short answer is “Yes, you can register a trademark if you haven’t formed a company yet.”
However, should you?
The answer really depends on the use in commerce at hand. In other words, who is using the mark in commerce? You, personally? Or your company?
It is important to remember that, when you form a business by registering it with the State of Michigan, you are creating a separate legal person. That LLC or other corporate entity is, in the eyes of Michigan, state, and US law, its own legal individual, with individual legal rights and standing.
If the LLC or other corporate entity is the one conducting the actual business, marketing to clients, selling products or services, and, yes, using that business name or logo in association with those products or services, it would not be true that you, personally, are using the mark in commerce.
The business is.
If you haven’t yet launched your business, but your intention is that the LLC or other corporate or business entity will be the individual that engages in trade and uses the name or logo in commerce, it would not then be appropriate for you to file a trademark registration application in your own, human name before forming your company.
If you do, you’ll end up needing to pay a trademark lawyer to assign the mark to the company later—at extra cost.
If you do intend to run the business in your individual capacity, as a sole proprietor, then it would be possible without need for later assignment, to register a trademark before forming a company.
Should I Form My LLC or Corporation Before Trademark?
The above is one reason to form your company and register your LLC or other entity with your state governing authority.
Another reason is to maintain your personal privacy.
When you file a US Trademark Registration, the applicant must provide a (non-PO Box) mailing address. If you are filing as an individual, unless you have a separate business address, you will be required to provide your home address.
This information will be viewable by anyone and everyone, globally, once you file the application. For most people, this is not desirable.
If you are conducting business and using the mark through a corporate entity, you will have (usually) a separate business address for use in the trademark registration application.
Registering a Trademark Before You’ve Formed a Company: Final Thoughts
The bottom line is that you have the option to file a trademark registration application before or after forming a company. However, taking the necessary steps to launch your business in the “wrong order” can result in unnecessary complications and unnecessary costs.
The best thing your new enterprise can do to maximize the odds of a successful and enforceable trademark registration is to retain a competent US-licensed trademark attorney to assist you.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.