Consider Whether You Can or Want to File a Federal Trademark Registration

My next two blog posts will discuss 5 tips for picking brand names and avoiding trademark infringement.  Today’s post discusses Tip 1.

When you are picking business and product names, there are important issues to consider in the context of trademark law.

Tip 1.  When picking a name that describes your goods or services for your business, consider whether you can or want to trademark it.

Why would I want to consider getting a federal trademark on the names that I use?

If you want to increase the odds that you can use the name you want to use where you want to use it, get a federal trademark.

The best way to increase the likelihood that you can use your business or product name on the Internet or sell goods or services nationally is to register the name with the federal Patent and Trademark Office (USPTO.gov).  It costs around $350 for one registration depending on the type of registration.

Although you get some limited common law rights when you use a mark in commerce, there are lots of benefits from a federal registration.

Benefits. First, federal registration gives notice to the public of your right and you can use the federal trademark symbol ®.   Other companies are less likely to use your mark if it is registered.

Second, registration gives rise to a legal presumption that you have the right to use the mark.  This is very, very important if you have a dispute with another company using an identical or similar mark for similar goods or services.

Third, registration is required for legal action in federal court.

Fourth, a federal registration gives you clear ownership status to bring complaints against others who are using your identical mark or confusingly similar mark in a domain name under the UDRP.  With a federal registration, you can stop squatters and companies who seek to capitalize on your popularity and good name with parking pages using similar domain names.

Finally, if you don’t have a federal registration, your use of your business name may be limited.  If there is a likelihood of confusion between your name and a federally registered mark as to the source of goods or services, the federal mark owner may try to stop your use of the name.

Can I get a trademark on the type of name that I want to use for my business or products?

Types of Names that Cannot be Trademarks

When considering a business or product name, it is important to understand that several types of names CANNOT be federally registered upon use.

Generic and descriptive names can’t be trademarks upon use.  Inherently, they are not distinctive and not good brand names.

Generic.  A generic name is the common name for a good or services.  For example, “life coaching” is generic and can’t be registered.  It is a common term used in the industry.  Similarly, “software” can’t be a trademark.  The government won’t stop people from using a common term that describes their services or products.

More examples of generic names:  Courts have determined that the following names are generic:  Super Glue (rapid glue); LIte (low-cal beer); Safari (hunting hats and jackets).

Descriptive. A descriptive name that describes something about your goods or services can’t be a trademark when you first start using it.  A descriptive name doesn’t immediately convey the source of the goods.

Rather descriptive names describe ingredients, characteristics or qualities of goods or services.  A descriptive name can only be a trademark after the name acquires “secondary meaning” — when consumers associate the name with a single source.

For example, “Life Coaching for Losers” is descriptive.  “Secure Software” is descriptive.

“Life Coaching for Losers” could be a trademark if after a period of exclusive use and marketing potential consumers associated the name with a single life coach.

More examples of descriptive names:  Jet (spray nozzle); Ice (beer); Vision Center (optical clinics).

Proper names.  Moreover, proper names that are primarily surnames are descriptive and can’t be trademarked until they are so famous that they have acquired secondary meaning.  Oprah has a federal registration on her name.  In contrast, I’m not famous enough to get one for Jill Hubbard Bowman.

Courts hate to stop someone from using their proper name in commerce.  They will bend over backwards to allow a merchant to use their proper name.

Book Titles. Generally, a single book title can’t be a trademark.  But a name that is a trademark (service mark) like “Career Renegade” for providing career services can also be a book title.

Types of Names that Can Be Trademarked Upon Use

Suggestive, arbitrary and fanciful names can be registered immediately upon use and are the strongest type of mark.

Suggestive. A suggestive name that subtly suggests a quality of a good or service can be registered.  For example, “Career Renegade” subtly suggests that the career information is for those who are not following a traditional career path.

More examples of suggestive names:  Contact (self-adhesive paper); Playboy (magazine); Citibank (bank); Q-Tips (cotton-tipped swabs).

Arbitrary and Fanciful. Random names that have little or no relationship to the type of business or product are the strongest marks and the easiest to register.

A name is arbitrary if without your advertising and marketing, people would have no idea what your goods or services are from your name.

For example, the name “Google” for Internet searching seemed arbitrary and bizarre when it was first used.  Yahoo! and DEL.ICIO.US are also arbitrary and fanciful.

Marketing and use have made these arbitrary names strong brand names.

I picked the name lookilulu for my career website for teenage girls specifically because I wanted a name that I could easily trademark.  The word lookilulu is made up.  It is a combination of the term “lookilu” which is a rubbernecker who stops and stares and “lu” a version of my mother’s name.  I wanted something feminine, hence the lulu aspect, and I wanted something that captured the idea of looking.  It captures the essence of my website that profiles career women for teenage girls to see positive role models.  Lookilulu is arbitrary—it isn’t generic, descriptive or even suggestive.

Do I want to get a trademark on the business or product name that I am using?

You should carefully consider the options when brainstorming names.

My personal opinion based on my bias against IP clean up:

If you really want to use a specific name and you pick the type of name that can be trademarked and there isn’t already a conflicting mark in use (my next post’s topic), it is insane not to file a federal registration.

But I realize that you may not want to pick a name that can be trademarked.

You may only want to get a registration on a particular product or a specific business name that is part of what you do.  You may not want to file a registration on a name that you are not going to promote or brand.  You may not want to file a registration on a name that you don’t really love.  You may not want to file a registration if  you are trying to pick a new name.

To file or not to file a federal registration also depends on the type of goods or services that you are selling.  It also depends on what you are trying to brand.

For example, some life coaches who sell individualized professional service may want to build their brand on their personal name even if they can’t get a service mark.  (Service marks are for services.  Trademarks are for goods.  Same difference.)  I think using a personal name and building your personal brand for coaching services is a fine idea.

Some coaches do both.  They build a personal brand and trademark their cleverly named services.  For example, Jonathan Field’s blog/website is jonathanfields.com and he is heavily marketing his personal brand.  He has also registered “Career Renegade” for his career services and is building that brand too.

Further remember that you can only get a trademark for commercial goods or services.  Regardless of the type of name you ultimately choose for your business or product, learning about trademark law and doing some basic groundwork is important.

If this was helpful, you may want to read the other post in this sub-series, Why It’s Important to Learn About Trademark Law When Picking Business and Product Names for Your Startup.