Does registering brand as DBA protect name or should I file trademark asap?

[artistdraw]

What is the name of your state? New Jersey

I am about to send in the form for registering my brand name as a DBA (trade name) I did this so when I file for trademark I don't have to use my name I can just use the DBA name. Should I rush and trademark the name or can I wait because now it is somewhat protected because of the DBA and also because I have been using it for a year?

I hear some people say register the trademark name because you don't wan't to waste money if it's already taken. I also hear people say do not register trademark until your business is actually making money.

 

[PayrollHRGuy]

I don't know where you are hearing all of these people but, a dba gives you a certain amount of protection in a given state, maybe. In some states, it is just a registration so the state can tie an otherwise nonincorporated name to a legal entity.

The right to a trademark come from using that trademark in commerce. You certainly don't want to use a TM that is already protected.

 

[FlyingRon]

A DBA itself gives you NO protection at all. It's a requirement of your state (and others) to operate under a fictitious name. A DBA in NJ doesn't guard against other companies being registered with the same name (unlike a corporation or LLC would).

Using the name in commerce as a trademark may engender some rights independent of it being a DBA, however.

 

[quincy]

You cannot register a trademark until you have already used the mark to identify your goods/services in commerce - but you can file an intent-to-use application if you haven’t yet used the name in commerce but plan to use it within 6 months.

What an intent-to-use application does is reserves your mark for later filing and registration. The date of filing of the ITU is used to help determine first use, should there be a challenge.

 

[adjusterjack]

Before you do anything I suggest you check the USPTO website and run a search for your "brand" and see if anybody else is using it already and why.

 

[quincy]

Before you do anything I suggest you check the USPTO website and run a search for your "brand" and see if anybody else is using it already and why.

Here is a link to the USPTO, using the trademark electronic search system (TESS): https://www.uspto.gov/trademarks-application-process/searching-trademarks/using-trademark-electronic-search-system

A search of federally registered marks is a start but, because trademarks do not need to be registered to have protection under trademark laws, a wider search is needed. State-registered marks should be checked as well as an internet search for others using the same or similar marks.

In the US, it is the first to use a trademark in commerce who will be the (presumed) owner of the mark. In many other countries, the first to register a mark is considered the owner of the mark.

 

[artistdraw]

Here is a link to the USPTO, using the trademark electronic search system (TESS): https://www.uspto.gov/trademarks-application-process/searching-trademarks/using-trademark-electronic-search-system

A search of federally registered marks is a start but, because trademarks do not need to be registered to have protection under trademark laws, a wider search is needed. State-registered marks should be checked as well as an internet search for others using the same or similar marks.

In the US, it is the first to use a trademark in commerce who will be the (presumed) owner of the mark. In many other countries, the first to register a mark is considered the owner of the mark.

I should have been more clear I did have a search done and the trademark is not taken. I paid to get this search done. I also didn't mean to put "protected because of the DBA" I meant protected because I am using it. You answered my question. First to use in the US is presumed owner of the mark. I am just wondering how would someone prove when they first used it. I guess it's from sales or social media presence, domain registration etc.

 

[quincy]

I should have been more clear I did have a search done and the trademark is not taken. I paid to get this search done. I also didn't mean to put "protected because of the DBA" I meant protected because I am using it. You answered my question. First to use in the US is presumed owner of the mark. I am just wondering how would someone prove when they first used it. I guess it's from sales or social media presence, domain registration etc.

You can show the date you first used the mark in commerce in a variety of ways. Filing a trademark application after first use of the mark is a common (but not required and not the only) way to have a record of first use.

Domain registration is not on its own a good indicator of first use of a trademark, however, because domain names are not trademarks (even if the domain name uses a trademark in its address).

Here is a link to the USPTO with information on dates of first use:
https://www.uspto.gov/trademark/laws-regulations/dates-use-1

If you already conducted a thorough trademark search and you uncovered no existing mark that is the same or confusingly similar to your own, you should be okay.

 

[artistdraw]

You can show the date you first used the mark in commerce in a variety of ways. Filing a trademark application after first use of the mark is a common (but not required and not the only) way to have a record of first use.

Domain registration is not on its own a good indicator of first use of a trademark, however, because domain names are not trademarks (even if the domain name uses a trademark in its address).

Here is a link to the USPTO with information on dates of first use:
https://www.uspto.gov/trademark/laws-regulations/dates-use-1

If you already conducted a thorough trademark search and you uncovered no existing mark that is the same or confusingly similar to your own, you should be okay.

Ok thanks. I have the money to trademark it now. But ran into this article and video saying it's best to wait until you know you are an actual business. (making money) Before this I was on my way and ready to trademark lol.

 

[PayrollHRGuy]

Ok thanks. I have the money to trademark it now. But ran into this article and video saying it's best to wait until you know you are an actual business. (making money) Before this I was on my way and ready to trademark lol.

Amazon was not profitable for 14 years after it was founded. Do you think they waited to trademark anything?

 

[quincy]

You need to have used your mark in commerce in order to file a trademark application (other than an intent-to-use application) and you need to list the date of first use of your mark on your application.

Depending on what sort of business you are in, the date of first use can be evidenced by the sale of one of your products from your product line sold under your trademark. Or, if you are in a service business, it can be the first time a contract is signed under your trademark.

 

[adjusterjack]

I am just wondering how would someone prove when they first used it.

That's easy. By keeping careful business records. These days with computers with large hard drives, inexpensive back up drives, and document scanners you can digitize your records and keep them forever.

 

[artistdraw]

Amazon was not profitable for 14 years after it was founded. Do you think they waited to trademark anything?

true

 

[artistdraw]

You need to have used your mark in commerce in order to file a trademark application (other than an intent-to-use application) and you need to list the date of first use of your mark on your application.

Depending on what sort of business you are in, the date of first use can be evidenced by the sale of one of your products from your product line sold under your trademark. Or, if you are in a service business, it can be the first time a contract is signed under your trademark.

I have used it and have been way before the sale of any products. I actually paid for advertising on social media before selling my first product. I wonder if that can be used as evidence if they needed. I also saw on the site they don't ask for evidence unless you change the date later on or did not provide on when filing.

 

[quincy]

I have used it and have been way before my first sell. I actually paid for advertising on social media before selling my first product. I wonder if that can be used as evidence if they needed. I also saw on the site they don't ask for evidence unless you change the date later on or did not provide on when filing.

If the trademark examiner notices any discrepancies in the dates given on the application, you can be asked for evidence showing the dates of first use. And if your trademark registration is opposed by someone, you would also need proof of first use.

But if you have done a thorough trademark search and no mark that is the same or similar to yours exists (as least as far as the search was able to determine), you probably won’t find an issue with the date of first use.