by Jim Martin
What’s in a name? More than you might expect, especially when it comes to your brand’s future. For many business owners, choosing the a great name is a challenge. You want something catchy, but not too out of the box. You want something easy to remember, but not easy to steal or copy. Most importantly, you want something that is protectable so that no one can tarnish or exploit your brand.
As you sit at your board room (or dining room) table trying to select the perfect name, you’ll take quite a few factors into consideration. One example is the availability of the “.com” domain name. However, one of the most important (and most overlooked) factors in naming your business is finding a name that can receive substantial federal trademark rights and protections.
Can’t Any Name Receive Trademark Protection? No. United States law specifies that a brand name can be registered on the Principal Register of The U.S. Patent & Trademark Office, thereby receiving significant federal trademark rights and protection, only if the name is actually distinctive and not merely descriptive. Why does this matter? Because a trademark registered on the Principal Register allows trademark holders to, register a trademark nationwide; file for an injunction to stop the unauthorized use of a trademark; file a trademark or service mark infringement claim for monetary damages; stop the importation of infringing goods, with a few exceptions; and more. A federal trademark registered on the Principal Register can help keep your business, yours.
Trademarking a Name With the Federal Government. There are five categories that both the courts and U.S. Patent & Trademark Office use to determine whether a name is distinctive enough for a trademark.
Fanciful. Would the name that be used in normal speech? For instance, you wouldn’t use the words “Starbucks” or “Kodak in a conversation with your friend unless you were talking about the brand.
Arbitrary. Is the name completely abstract from what is offered? Good examples include, Amazon, Apple, or Chevron.
Suggestive. Does the name allude to what you offer without being fully descriptive? Some examples are Liquid Paper and Mustang.
Descriptive. Does the name describe specific features, qualities, or characteristics of the goods or services you provide? Trademarks that are merely descriptive, however, are relegated to the Supplemental Register, a sort of consolation prize, rather than the Principal Register, resulting in significantly fewer rights and protections.
Generic. These names describe the class of your product or service. They should be avoided at all costs as they will not be afforded a trademark or service protection. If you call your new bread simply Bread, you will be disappointed.
Although there are lots of factors to consider when choosing your brand name, it may be a good idea to choose a name that is fanciful, arbitrary, or suggestive over one that is descriptive or generic because of the substantial trademark rights associated with fanciful, arbitrary, or suggestive trademarks. Some branding experts suggest that descriptive names work best in the market because they leave no doubt in a buyer’s mind about what’s being sold. Moreover, some of the most well-known brands (such as The Weather Channel, Cartoon Network, and Hotels.com) use extremely descriptive, but are trademarked on the Principal Register, so why can’t you? Although there are big brands with descriptive names, these companies likely endured a steep uphill battle in order to secure trademark registration on the Principal Register.
The goal of federal trademark law is to first and foremost avoid confusion in the marketplace as to the source of the goods and services. Yes, some big businesses have successfully registered descriptive trademarks on the Principal Register by spending a lot of money on marketing a mark so that it acquires “secondary meaning”. It is viewed as unfair to allow any new business to trademark a term that generally describes a product or service and would effectively preclude any other business from marketing, selling or providing an entire class of goods or services.
A Few Tools to Help. Does it feel like your hands are tied? Have you lost inspiration for finding a creative, protectable name? Don’t lose hope. There are tools available to help you find the perfect protectable business name. Here are a few to get you started:
Combine keywords. You know what your customers will be searching for to find what you sell. Take those search terms and plug them into LeanDomainSearch.com to find available word combinations. This can help you find unique ways to combine descriptive words into a business name.
Think fiction. You can also use Wordoid.com for fictitious word ideas. Plug in your keywords and you’ll get unique derivations for descriptive words about what you sell.
Have fun. Websites, such as Panabee.com, show creative, available domains. Plug in a few keywords, extensions, and more to come up with two or three word combinations. This is a fun tool to use when starting your brainstorming process.
Check the legal status. With all the fun you’re having, don’t forget to check the legal status of the names you’re considering. Visit tmsearch.uspto.gov to make sure your name is available or to find other names close to the one you’re considering that have been taken.
Let the Market Have the Final Say. Once you have a few good names in your pocket, let the market have a say. Start a few campaigns using each of the business names you’re considering. To do this, you’ll need domain names, landing pages, and advertising. Decide on a specific giveaway, such as a newsletter, download offer, or e-book. Then, set up each page to offer the same promotion on the same terms. Try not to vary any other elements besides the business name. This way, you’ll know which name resonates more with your audience, and which names fall flat. Once you have your landing page, start promoting it using Facebook, Google, Twitter, and/or Pinterest advertising. It can be a cost effective way to find a long-term name that you can protect AND use to grow your business.
Takeaways. Finding that perfect protectable business name can help avoid headaches, hassle, and hardship later. We thank Phoenix attorney Steve Cook for this great advice.