By UpCounsel Trademark Attorney Tiffany Donaldson

You are finally ready to start your business. You have your product or service idea and your business plan. You cobbled together your start-up funds and now it’s time to name your business.

Your mind is swirling with words and images. You are trying to conjure up the correct combination of words to express the grandeur of your new endeavor.

Most business owners at this stage are thinking of the best name for search engine optimization (SEO) or the best name to describe their product or service, but not you.

Because you are a savvy business owner, and you know that when naming a business, you need to start with trademark law principles. You know that you should move forward and put money behind your mark only after it has cleared the hurdles of a trademark research review and evaluation.

“Trademark law principles?” you ask. Yes. Trademark law principles. Although big business branding is based upon it, many small business owners do not know that choosing your business name should be based upon trademark law principles, first and foremost.

Terms to Avoid

Already Trademarked Terms

The first reason that you do not want to put money behind a business or product name that has not passed a trademark research review and evaluation is that you can be sued for three times the profits that you make while using a name that is already federally registered in your field or a related field with the Unites States Patent and Trademark Office (USPTO).

Generic Terms

Not every business name may be registered by the USPTO. A “generic” term is a term that other business owners competing with you may need to use to sell their competing product or service. Ex: If one company could exclusively register the mark “Chocolate Company” for a company making chocolate, competing chocolate companies would have trouble explaining what they produce without also using that mark.

Terms that Describe the Products or Services Sold By the Company

Other terms that are difficult to trademark are terms that “merely describe” the products and/or services the Company sells. For example: “Chewy” for the name of a Company that makes chewing gum would likely be found “merely descriptive” of the product it sold.

Granted, merely descriptive terms can be registered if the mark has been used for a number of years and is well recognized. However, as a savvy business owner, you do not want to set yourself up for an uphill trademark battle, so merely descriptive terms are best avoided.

Unavailable URLs, Facebook and Twitter Handles

Just because your mark has not been registered with the USPTO by some other company does not mean that there are not other competitors using it. These users, who may have first use (used the mark before you started using it), can cause trouble if they “wake up” and decide to file.

Therefore, before you choose your business or product name, you want to ensure that a website that you want to use is available, along with the handles for all social media sites that you may utilize.

Why? Your goal is to create a unique, and distinctive brand name that you can put your time and money behind. You do not want to start your business and have others confuse it with someone else’s business or leave it open to a trademark suit.

Act Like Big Business

Big businesses know the trademark laws backwards and forwards and they abide by them. Ever heard of Google? Does Bing ring a bell? Trivago? Enbrel? What do these marks have in common? They are all “suggestive” and/or “fanciful” marks. When the company name only suggests what it sells, or doesn’t suggest anything, the mark is strong and is likely to register with the USPTO.

Before search engines existed, “Google” was defined only as a rather large number. The term really had nothing to do with a search engine. That is why it is a strong mark.

“Bing,” may suggest getting the right answer, or the sound a timer makes, but it has no direct relation to a search engine.

“Trivago,” a made-up word for a travel comparison website, is an extremely strong mark. Why? It was not even in the English language until created. And so too do you see every new drug on the market coming out with a made-up name. Enbrel, Lyrica, Humira, Prylosec, Chantix, and the list goes on.

The reason for this is that these are major marks, with a lot of money being spent on promoting each brand. The big pharmacy companies cannot take a chance on trademarks that will fail to register or be subject to suit. They know the trademark rules and they follow them.

SEO Versus Trademark Law

It may seem that SEO principles are at odds with trademark law principles. With SEO, it is often optimal to utilize a term that describes your product in the company name, so that when searching for the product online, shoppers may hit on your company.

Be wary of this. Under trademark law principles, you want to avoid using merely descriptive terms and/or generic terms in your business name.

What should you do if you rely on SEO? Compromise. Think of a suggestive and/or unrelated term to put before a term that might be merely descriptive. Example: Instead of Chocolate Company, you could use “Hershey’s Chocolate Company.”

The Takeaway

In conclusion, you are going to be putting a lot of time, attention and money behind your brand. Start right. Start with a strong, unique mark that you can protect. Have trademark research performed, and have the research reviewed and evaluated by a trademark attorney.

Consider how the mark is being used by anyone, even unregistered users. Check to see if a website, Twitter handle and Facebook handle are available. If you follow these guidelines, you are likely to save yourself a trademark battle, a headache and a lot of money in the long run.

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About the author

Tiffany Donaldson

Tiffany Donaldson

Tiffany has experience advising a wide range of companies on formation, contracts, minutes, trademark, branding, employment, non-disclosure and non-compete agreements, licensing, and franchise related issues.
She previously worked for commercial and bankruptcy law firms, as an e-discovery attorney, and has clerked for the Maryland Court of Special Appeals.

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