The most important trademark steps for a startup are to choose a distinctive name, clear it with a search before you invest in it, and file a federal application with the U.S. Patent and Trademark Office (USPTO) as early as possible, even before launch, using an intent-to-use application. Registering your company with the Secretary of State does not give you trademark rights. Once registered, a trademark can last indefinitely as long as you keep using it and file the required maintenance documents.
Many founders treat trademarks as something to deal with later. But a brand name is often one of a startup’s most valuable assets, and a forced rebrand after launch can be costly and disruptive. These tips can help you protect your name from the start.
1. Choose Your Mark Early and Choose It Carefully
The sooner you settle on a name, the sooner you can start building goodwill in it and secure priority over later users. But not every name can function as a trademark. Trademark law places marks on a spectrum of strength:
- Fanciful (invented words) and arbitrary (real words unrelated to the product) marks are the strongest and easiest to protect.
- Suggestive marks hint at a quality of the product without describing it and are also protectable without further proof.
- Descriptive marks, which directly describe the product, can be registered on the Principal Register only after they acquire distinctiveness (secondary meaning) through use. They may qualify for the Supplemental Register in the meantime.
- Generic terms, the common name for the product itself, can never be protected as trademarks.
Marketing teams often favor descriptive names because they explain the product immediately. Legally, that makes them weaker and harder to enforce.
2. Know What the USPTO Is Likely to Refuse
Beyond likelihood of confusion with existing marks and descriptiveness, the USPTO commonly refuses or limits marks that are:
- Primarily merely a surname (registrable only after acquiring distinctiveness)
- Primarily geographically descriptive of where the goods or services come from
- Foreign words that translate to descriptive or generic terms
- The name, portrait or signature of a particular living individual, without that person’s written consent
- The title of a single creative work, such as a single book
- Purely ornamental, such as a slogan printed decoratively across a T-shirt
Some of these refusals can be overcome with evidence or amendments, but it is better to know the issues before committing to a name.
3. Search Before You Commit
Before launching, run a clearance search for the same or confusingly similar marks used for related goods or services. A thorough search typically covers:
- The USPTO’s trademark search system for registrations and pending applications
- State trademark registrations
- Unregistered (common-law) use found through web searches, business directories and app stores
- Domain names and social media handles
The legal test is likelihood of confusion, which looks at the similarity of the marks and the relatedness of the goods or services. Two businesses can sometimes use similar names in unrelated industries, but the analysis is fact-specific.
4. Your Company Name Is Not Automatically a Trademark
Forming a corporation or LLC with the California Secretary of State, or filing a fictitious business name statement, does not create trademark rights or prevent others from using the name as a brand. Trademark rights come from using a name to identify goods or services and, more strongly, from federal registration. Your product names do not need to match your company name, and many companies own several marks for different products and services. Our business formation page covers entity name issues.
5. File Early, Even Before Launch
Federal registration is not required to have trademark rights in the U.S., but it provides important advantages, including nationwide constructive notice, a legal presumption of ownership and validity, the right to use the ® symbol, and access to federal court and to tools for blocking infringing imports.
You do not have to wait until you are selling. An intent-to-use application lets you file based on a bona fide intention to use the mark. Once the mark registers, your filing date generally serves as your nationwide priority date (called constructive use priority), which can put you ahead of someone who started using a similar mark after you filed. You will need to show actual use with an acceptable specimen before the registration issues.
Applications are examined by a USPTO attorney, who may issue an office action raising refusals or requirements that must be answered by a deadline. The USPTO restructured its application fees in 2025, so check the current fee schedule when budgeting. Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney.
6. Use the Right Symbols
You can use ™ (or ℠ for services) with any mark you claim, registered or not. Use ® only after the USPTO issues a registration, and only for the goods and services covered by it. Misusing ® can create problems in enforcement.
7. Maintain and Police Your Registration
Unlike patents and copyrights, trademark rights can last indefinitely, but only if the mark stays in use and the registration is maintained:
- A declaration of continued use (Section 8) must be filed between the fifth and sixth year after registration.
- A combined Section 8 declaration and Section 9 renewal must be filed every ten years.
- Grace periods exist but carry extra fees, and missed deadlines lead to cancellation.
Owners are also expected to police their marks. Monitoring new applications and marketplace use, and acting promptly against confusingly similar marks, helps keep your brand strong.
The Takeaway
A trademark can become one of the most valuable assets your startup owns and is frequently a key item in investor and acquirer diligence. Choosing a distinctive name, searching before you commit, filing early and keeping up with maintenance can help you avoid an expensive rebrand later. For a deeper look at the process, see our Trademarks 101 guide.
Frequently Asked Questions
Do I need to register a trademark to have rights in it?
No. In the U.S., using a mark in commerce creates common-law rights in the area where it is used. Federal registration adds nationwide notice, a presumption of ownership, use of the ® symbol and stronger enforcement tools.
Can I file a trademark application before my startup launches?
Yes. An intent-to-use application can be filed based on a good-faith intention to use the mark. You must show actual use before the registration issues, but your filing date can give you nationwide priority once it registers.
Does registering my company name with the state protect it as a trademark?
No. A Secretary of State filing or fictitious business name statement does not create trademark rights or stop others from using the name as a brand. Trademark protection comes from use and registration.
How long does a trademark registration last?
A federal registration can last indefinitely if the mark stays in use and the owner files a Section 8 declaration between years five and six and a combined renewal every ten years.
How Sutter Law Can Help
Sutter Law helps founders select, clear, register and maintain trademarks as part of our intellectual property and startup law practices. Contact us for a free consultation.
This article is general information, not legal advice. Reading it does not create an attorney-client relationship.
