Choosing a Business Name: Trademark Considerations for Entrepreneurs
By: Joseph Theis
What’s in a name? As an entrepreneur, selecting the perfect name for your business is a crucial step in cementing your brand identity. This involves more than finding a catchy or meaningful moniker that resonates with you and your consumers — you also need to navigate the complex landscape of trademark law and consider potential trademark issues.
Your business name is often the first point of contact with customers and a cornerstone of your brand equity. It’s the word or phrase that will appear on your storefront, website, business cards, and marketing materials. However, choosing a name that is both marketable and legally protectable can be a difficult balancing act. You must consider not only how the name sounds and what it conveys about your business, but also its availability for use without infringing on existing trademarks. Any missteps in this process could lead to costly legal battles, forced rebranding, or limitations on your ability to expand into new markets. Therefore, it is critical to approach selecting a business name with both creativity and legal savvy.
Below are several key strategies and considerations to help you choose a business name that not only captures the essence of your brand but also affords strong trademark protections.
Conduct a Thorough Search
Before choosing a name, it is crucial to perform a comprehensive search to ensure it is not already in use or too similar to existing business names and trademarks. This step is vital in avoiding potential legal conflicts. Important resources for conducting business name and trademark searches include the following:
USPTO Trademark Database;
State Trademark Registries;
Local Business Name Registries;
Domain Name Searches;
Social Media Platforms; and
General Internet Searches.
The goal of these searches is not just to identify exact matches but also to identify similar names and potential conflicts before they become legal issues. Trademark attorneys are well-equipped to conduct these searches and analyze results to present recommendations and advise as to the proper path forward for selecting the best business name.
Aim for Distinctiveness
When choosing a business name, distinctiveness is key from a trademark perspective. The more distinctive your name, the stronger your potential trademark protection. There are several levels of distinctiveness and protectability for trademarks:
Fanciful
Fanciful Marks are invented words with no dictionary meaning (e.g., Kodak, Xerox). They offer the strongest protection because they are inherently distinctive.
Arbitrary
Arbitrary Marks are common words used in an unrelated context (e.g., Apple for computers, Amazon for retail). These marks are also considered inherently distinctive.
Suggestive
Suggestive Marks hint at the nature of the product or service but require some imagination to make the connection (e.g., Netflix, Coppertone).
Descriptive
Descriptive Marks describe a quality or characteristic of the product/service (e.g., Best Buy, American Airlines). These are not inherently distinctive and require proof of acquired distinctiveness through use to be protected.
Generic
Generic Marks are common names for products/services (e.g., "The Shoe Store" for a shoe store). These cannot be protected as trademarks.
Consider these strategies for creating Distinctive Marks:
Create compound words or phrases (e.g., Facebook, PayPal);
Use metaphors that relate to your business (e.g., Nike - Greek goddess of victory);
Blend two words to create a new one (e.g., Pinterest - pin + interest);
Change the spelling of common words (e.g., Lyft, Tumblr).
Choosing the most Distinctive Mark possible will help to create a unique brand identity with the strongest level of trademark protection. These benefits are invaluable for businesses as they expand and face potential competitors in the marketplace.
Additional considerations for choosing a business name are as follows:
Think Long-Term
Choose a name that can grow with your business. Avoid names that limit you to a specific product or geographic area, especially if you plan to expand your offerings and operations.
Consider Domain Name Availability
In today’s digital age, securing a domain name that matches your business name is crucial. It is also beneficial to secure a domain name that is easy to read and easy to search. Check domain name availability as part of your naming process so that you can easily obtain a suitable domain to anchor your businesses’ online presence.
Steer Clear of Famous Marks
Avoid names that are similar to well-known brands, even if they are in a different industry. Famous marks enjoy broader protection beyond specific fields of goods and/or services.
In order to follow these guidelines and achieve the best results in choosing a business name, consider consulting with a trademark attorney. Here at Theis Chayse, we can guide you through the business name and trademark search process and help evaluate the strength of your proposed name from a business and legal standpoint. Remember, investing time and effort in choosing a legally sound and creatively strong business name can save you from costly rebranding or legal disputes later. A unique, distinctive name that is clear of conflicts will serve as a valuable asset for your business and enable you to establish your brand identity.
To learn more about trademark protections and to consult with an experienced trademark attorney, please send an inquiry to theis@tcip.law.