Trademarks Essentials: What’s in a Name?
Picking a name for your business is often the first thing small business owners tackle. But despite their efforts to be different, clever, and expressive, we’ve seen some avoidable missteps. Follow our advice so you’ll (1) pick and use trademarks that are original and registerable and (2) avoid a claim that you’re infringing someone else’s trademark.
Rule 1: Spelling Doesn’t Matter
The standard in trademark law is whether a consumer is likely to be confused by your use of a trademark similar to someone else’s. Changing the spelling or adding “the” won’t cure consumer confusion. Frequently, even adding a descriptive word won’t cut it. For example, Target Marketplace is still confusingly similar to Target® when used in connection with retail stores (and lots more).
Rule 2: Googling is not enough
You’ve thought of the Perfect Name. You asked your family and friends, and they love it, too. You searched the internet for your Perfect Name and didn’t find much so you’re all in. Not so fast. An internet search is just the first step. Your initial searches should also include domain names, the U.S. Patent and Trademark Offices’ trademark database, and social media platforms. But even then, you’re likely not finding everything. We got you. We have access to the gold standard of trademark search platforms, Corsearch®. For a flat fee, we’ll search your Perfect Name and most logos before you invest.
Rule 3: Aim for arbitrary or fanciful
The most valuable marks are arbitrary like Apple® for phones, computers, etc. or fanciful like Kleenex® for tissues. Furthermore, trademarks that just describe features or characteristics of your goods or services often can’t be registered.
Rule 4: Never use another company’s trademark
Never use another company’s trademark in your business’s name. For example, if your business relates to social media marketing, do not name your business The Instagram® Master. If you tutor high school students to prepare for the ACT do not name your business ACT Prep Wizards.
Rule 5: Don’t wait too long
You have the Perfect Name, it has passed all the searches with flying colors, and your customers get it. Now protect it! Although trademark rights come from use not registration, if someone else registers your Perfect Name, or something close, before you do, undoing that is a daunting and expensive process. Pre-launch might be the perfect time to register your trademark and use the USPTO’s long (6-9 month) lead time to your advantage. Want to know how? Not sure when to register your Perfect Name? Ask us. We’re here to help.
Your Perfect Name is valuable to you and your company, with expensive consequences if you get it wrong (e.g., re-branding and litigation). We offer flat fees for trademark searching and registration. And trademark services are included in some of our legal subscriptions. Have a name you want to run by us? Let’s talk.
Stephanie, owner of Melnick & Melnick, S.C. and self-described law nerd has been practicing law for over 25 years. Stephanie loves taking a deep dive into clients’ businesses to learn what makes them tick. She also relishes a well-written (short and simple) contract and is pleased to draft and negotiate all kinds, including leases, operating agreements, and terms of service.more posts by Stephanie →