Choosing a name can be big decision. If you have ever gotten a new puppy, written a poem, or created an online dating account, you may have lost a bit of sweat weighing the pros, cons, and possible connotations of your chosen name. Sometimes the scariest part is thinking that you only get to pick once. When deciding on a name for a new business or product, concerns are usually compounded by deliberations over how to be compelling and distinctive in the marketplace.  You want to both attract customers and stand apart from your competition. As a lawyer, I get to be the one to tell my clients that they have yet another layer to consider: Trademarks. It really is not as scary as it might seem. However, it is extra motivation to make sure that your name is in fact distinctive, at least in your market. A little due diligence up front can save a lot of headache down the road. Ensuring you have a distinctive name will help protect you against would-be copycats, and from getting sued (successfully) by someone who registered the name first.

Trademark Background

A trademark is any word, name, symbol, device, or any combination thereof, used to identify and distinguish a particular good or its source. Marks for services and their providers are termed service marks, but are frequently called trademarks as well. A trademark that is actively being used in commerce and properly registered with the USPTO becomes a piece of property in and of itself. It can be bought and sold, often for serious cash.

Marks are federally protected by the Lanham Act. The fundamental policy behind the Act is to protect consumers from the likelihood of confusion as to the source of goods. Owning a valid trademark gives you both the right to use a mark, and the right to exclude anyone else from using anything confusingly similar. This helps to prevent dilution of a business’s brand. To a certain extent, it also serves to incentivize businesses to maintain a consistent quality of goods or services associated with their marks. A protected mark may be a name alone, or incorporate a logo, or any number of other elements that might be indicative of a particular product’s source. The USPTO even granted Apple a trademark over the layout of its retail stores in 2013. Of course, the first step is still choosing a name.

How to Measure Distinctiveness

In order to be capable of preventing consumer confusion, and therefore worthy of trademark protection, a name must be distinctive within its market. The more distinctive it is, the stronger the trademark protection. There are essentially two ways to be distinctive: 1) to be recognized by consumers; and 2) to be inherently distinctive.

The first you probably don’t need to worry about if you are launching a brand new business or product. However, for those of you who already have established companies or brands, but never thought about trademarks before naming them, it can prove a life saver.  Essentially, when a name that would otherwise be rejected by the USPTO as being too generic gains enough recognition by the general public to identify a particular source, a court will grant it trademark protection on the basis of acquired distinctiveness. It is absolutely the hard way to go since you will need to make a showing that the name or mark has acquired secondary meaning, that it has become distinctive as applied to your goods or services in commerce. 15 USC §1051(f).

The easier path to distinction is choosing a name that is inherently distinct from the get-go. Seems simple enough. In trademark case law, there are generally four buckets of distinctiveness that a court will use to categorize a mark: 1) generic; 2) descriptive; 3) suggestive; or 4) arbitrary or fanciful. A generic name would be like calling your new bourbon distillery WHISKEY. You would have no trademark because these marks are un-protectable.  A descriptive name would be something like LEAN LINKS for a low-fat sausage product, or Law for the Entrepreneur for this blog. A descriptive mark will only obtain trademark protection if you can show proof that it has acquired distinctiveness in commerce. Suggestive marks are those that require some perception or imagination to link the mark to the goods, such as COCOA PEBBLES for a crispy chocolate cereal. These are considered inherently distinctive and are entitled to protection. Arbitrary marks are those that are made up of common words, but applied in an unconventional way, such as TWITTER to a social media platform or VIRGIN to an airline. These marks are also considered inherently distinctive and entitled to protection. The strongest marks are the fanciful ones. These names don’t exist in the dictionary. Someone just made it up after too many cups of coffee. PINTEREST was not a word, but it has become a very strong trademark.

You probably noticed that the decision as to which bucket a mark is placed in very much depends on the particular context of the mark. Fanciful marks are the only ones that are not judged in relation to the source the trademark is supposed to identify, and that is only because they couldn’t possibly refer to anything else since the word is made up. Remember, the policy behind trademarks is aimed at preventing consumer confusion.

 

Do Your Due Diligence

Once you have picked a name or several options that you think should be sufficiently distinctive, you need to do your due diligence. There are companies that will perform a basic trademark search for you for around a hundred bucks.  There are also companies that charge tens of thousands of dollars to choose and vet new names based on linguistic and market analysis. Then there are attorneys who will fall somewhere in between that fee spectrum, and provide you the added benefit of legal counsel specific to your particular circumstances. Finally, there is the DIY route.  What option you choose depends on your risk tolerance. The more thorough you want to be, the more you will probably spend (whether in money or time) and the less likely you will run into any issues down the line.

Though I must advise against it, if you do choose to go the DIY route, I would urge that you check a number of sources. It is probably best to start with the easiest ones, and only move down the line if each step is clear.

1. Domain: Check to see if the web domain for your chosen name is available through 1&1 or GoDaddy or similar. If it is taken, there is a good likelihood that your name is in use. If it is clear, don’t register it yet, but make a note and move on to the next step.

2. Internet Search Engine: Perform a basic internet search through at least two different search engines, call it Google and Bing. Try as many different variations of the name as you can think of.

3. State Trademark Database: If possible in your state, check its local trademark registrations. These can sometimes be more problematic than national registrations.

4. State Business Entities: Check your Secretary of State’s registered business name database. If there is a way to search DBAs, make sure to search those as well. State’s generally require that Trade Names be distinct from those already registered, and will often keep good records of who is using what names. More information for Washington business owners may be found here. 

5. National Trademark Search: Finally, and most importantly, do a thorough search of registered trademarks through the USPTO.  Start with the entirety of your name, but make sure to search individual words and fragments, and any variation you can think of.

These steps would not constitute an exhaustive search and I’m not going to tell you that you are in the clear if you do not find anything after these steps. However, it is a place to start and I can tell you that performing at least these steps will put you in a substantially better place than those who never gave trademarks any consideration at all.

Even if you do find something, it may not exclude you from using the name you so desperately want, depending on the scope of the trademark coverage. However, that is when a smart business person invests in a trademark attorney. While on the subject of hiring an attorney, I must emphasize that choosing a name is substantially different than registering a trademark. The likelihood that a DIY filing will result in a successful registration that will stand up in court is slim at best, so hire an attorney to avoid rookie mistakes.

Ok. Now that I have successfully scared you, go choose a name. Be creative, but be cautious. One day your name may be known in households worldwide. As much as you stress about a name, and as many consultants as you hire to help you pick the right one, at some point you simply have to pick one and begin. Remember this, you can always change your name down the road. That, however, is a story for another post.

Drop by again soon.

Thanks for reading,

Tim