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Overview
You found a great name, bought the domain, locked in the social handles and filed the LLC. It feels settled. But none of those steps gives you the legal right to use the name, and the conflict usually shows up after the logo is designed and the launch date is on the calendar.
On this episode of the Duct Tape Marketing Podcast, I talk with trademark attorney Natalie Nguyen, founder of Prolumis Legal in Oklahoma City, about how to trademark a business name the right way. We cover why a Google search isn’t a clearance search, how trademark classes work, what it costs when someone else registers your name first, and why those cheap filing offers in your inbox can create bigger problems later.
This one is for small business owners, entrepreneurs, authors and marketing agencies who name things for a living. If you’re launching a business, a product line or a book, listen before you spend money on design.
Guest Bio
Natalie Nguyen is a trademark attorney and the founder of Prolumis Legal in Oklahoma City. She has filed more than 2,000 trademark applications, building her experience in a high-volume national trademark practice and an in-house role at a Fortune 100 company. Nguyen is licensed in Texas and Oklahoma.
She founded Prolumis Legal on the belief that trademark protection should start with strategy, built around where a business is headed. She works with entrepreneurs, branding agencies, authors, publishers and podcasters on clearance, registration and brand protection.
Key Takeaways
- Forming an LLC and registering a domain gives you a business entity and a web address. Trademark rights come from registering with the United States Patent and Trademark Office (USPTO).
- A Google search will catch identical names, but trademark confusion can come from names that are only similar.
- Clearance has to look beyond your exact goods and services to anything a consumer might see as related.
- Trademarks are registered by class. Delta Air Lines, Delta Faucet and Delta Dental can all coexist because they sell very different things.
- Big brands can still push back across classes if they believe a newcomer is trading on their goodwill.
- Using a name for decades gives you common law rights, but defending them means a cancellation fight that is costly, slow and uncertain.
- Nguyen’s triage for any name: Is it distinctive? Is it available? Can it grow with your business?
- Branding agencies help their clients most when they bring a trademark attorney in before presenting final name options.
- Budget filing services rarely include a proper search or careful goods and services descriptions, and the USPTO filing fee alone is $350 per class.
- Anyone can use TM. Only marks registered with the USPTO can use ®. Once you’re registered, you’re responsible for policing your mark, starting with a cease and desist letter.
Great Moments (Timestamps)
[00:01] – The name feels settled, until it isn’t
[01:06] – What 2,000 trademark filings have shown Nguyen about when owners discover a problem
[01:51] – A family business using its name for fifty years finds someone else already registered it
[02:53] – Common law rights and why defending them is expensive
[03:56] – The marketer’s view of a name versus the trademark attorney’s view
[04:58] – The biggest misconception: the LLC and the domain
[05:24] – Why a Google search misses potential conflicts
[06:08] – Using the USPTO’s own search tool as a starting point
[06:55] – The Delta example and how trademark classes work
[07:24] – False association and borrowing someone else’s goodwill
[08:09] – Triage for a name that’s already launched
[08:31] – The Brand Protection Scorecard
[10:08] – ProlumisClear and why branding agencies should involve an attorney early
[10:55] – The retailer contract that hinged on a trademark someone else had filed
[12:17] – Are the $275 trademark filing offers worth it?
[14:24] – Disclaimers and why I couldn’t claim the word “marketing”
[15:23] – Can you trademark a book title?
[16:38] – Date of first use anywhere versus date of first use in commerce
[17:37] – Protecting a trademark outside the United States
[18:36] – TM versus ®
[19:47] – How to police your trademark
[21:20] – How to connect with Nguyen
Memorable Quotes
“Just because you got the LLC, just because you got the domain, your trademark is not protected.” Nguyen
“It doesn’t have to be identical for there to be trademark confusion.” Nguyen
“A trademark is not just about filing a trademark. You need to come up with a strategy from the beginning.” Nguyen
“If there’s any trademark attorney that is telling you that they can file a trademark for $200, you’re going to get what you’re paying for.” Nguyen
“I would much rather have that conversation in the beginning than later on, after they’ve already invested thousands of dollars.” Nguyen
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