Naming a new business or product line is a difficult but crucial
task. You want something catchy that
people will remember, you want customers and competitors to take your business
seriously, and you usually want to give the public at least a hint about what
you do or sell. In addition to general
business concerns that arise when choosing a name (e.g., is the corporation or limited liability company name
available in the state you want to register in? Do you need a business
license? Etc.), there are several
trademark considerations that should be taken into account.
Not every trade name
used to identify a business will qualify for trademark protection. The primary roles of trademarks are: (1) to identify
and distinguish the trademark owner’s goods or services from those offered by
others, (2) to indicate the source or origin of the trademark owner’s goods or
services, (3) to assure the public that they are procuring the genuine goods or
services from the trademark owner and (4) to secure the trademark owner against
the substitution and sale of inferior or different goods and services bearing
the trademark, or a confusingly similar mark.
In general the function of a trademark is to signal the source of your
goods/services and prevent consumer confusion in the marketplace.
In selecting a name
that distinguishes your business as the source of your goods or services, a
common, and highly recommended, approach is to order a trademark search to
identify any similar business or product names.
There are several companies who offer these types of professional
searches. A proper search will include a
review of registrations and pending applications of record in the United States
Patent and Trademark Office (“USPTO”), a review of state trademark registration
information, and such common law material as trade name listings, business
licenses, Internet domain names and telephone listings. Some believe that an online search of the
possible name will suffice, but it doesn’t. An online query is a good start and
should be done before spending money on a proper trademark search report, but
it will not be substitute for a full report.
In general, in
analyzing the trademark search report you are assessing the possibility that
either the USPTO will reject your trademark application or a third party will
object to your application due to the similarity of your proposed mark to a
mark in use. Hiring an experienced
trademark attorney to fully assess the results of the search is recommended, as
issues that may not appear as a bar to use and registration to even an
experienced businessperson may raise red flags to an eye trained in the
subtleties of trademark law. Undertaking
a professional search and analysis prior to investing money and effort into
marketing and promoting a new business or product name is invaluable. All too often clients tell me that they’ve
spent thousands of dollars promoting a new business or product name only to
find out later, usually because they’ve received a cease and desist letter, that
it (or a confusingly similar mark) is being used by someone else. At that point
it is often necessary to discard all of the time and money invested in the
chosen name and go back to square one.
With regard to the
distinctiveness of a name or design, the USPTO categorizes marks along a continuum
of distinctiveness. When choosing a name
and/or logo for your business or product you should ask yourself where on this continuum
your mark would fall.
At one extreme of the
spectrum are marks that, when used on or in connection with the goods or services,
are coined or fanciful and are therefore deemed inherently distinctive. An example of this type of mark is KODAK,
which is used to identify photo supplies. Coined or fanciful marks are
considered inherently strong marks.
Further down this continuum are suggestive marks. These are marks that, when applied to the
goods or services at issue, require imagination, thought or perception to reach
a conclusion as to the nature, ingredients quality or characteristics of the
goods or services. These are often the
best marks for businesses. An example of
a suggestive mark is SKINVISIBLE, which is applied to medical tape through
which the skin of the user is visible.
Next on the continuum are marks that are merely (read: only) descriptive
of the nature, ingredients, quality or characteristics of the goods or services
they identify. An example is BABY BRIE
used for cheese sold in a smaller size. Merely
descriptive marks will not be registered on the Principal Register of the USPTO
unless the owner can prove that they have acquired the requisite
distinctiveness through prior use in commerce.
Also in this category are marks that are merely deceptively
misdescriptive of the goods or services.
Finally, at the opposite end of the continuum from coined, arbitrary and
fanciful marks are generic terms for good and services. Generic terms can never function as a
trademark. For example, the term BICYCLE
has been a highly protected arbitrary trademark since 1885 for playing cards,
but would be generic if used as a mark for a two-wheeled mode of transportation.
Although many business
owners are reluctant to spend money and time investigating a name prior to
settling on one, the money spent taking precautions in advance will often be
inconsequential compared to the amount spent if you are required to change your
business or product name after you’ve promoted it, or the amount spent in
costly infringement litigation.
information about legal issues is for informational purposes only and is not
intended to constitute advertising, invite an attorney-client relationship or
serve as a source for legal advice. You should not rely upon any information
contained herein for any purpose without seeking legal advice from a duly
licensed attorney competent to practice law in your jurisdiction.