In my last post, I discussed why scalable companies shouldn’t use generic or descriptive brand names that can’t be trademarks.

Today’s post discusses the alternative types of names that may be protected by federal trademark law:  suggestive, fanciful or arbitrary names

Mark strength in descending order from weak to strong:

• generic
• descriptive
• suggestive
• fanciful or arbitrary

In contrast to generic and descriptive names, trademark law may protect suggestive, fanciful or arbitrary names, which are distinctive and make your brand stand out in the marketplace.

A suggestive name is one that requires a little imagination and thought to determine the relationship between the name and the nature of the goods or services that it represents.  A suggestive name doesn’t just describe the product or services.  For example, “ConstantContact” is a suggestive name for email marketing services.  The name “ConsantContact suggests that the service involves frequent contact with others but does not directly describe email marketing services.  It takes a little thought to see the connection between the name and email marketing.  Similarly, “Zipcar” is a suggestive name for car sharing services.  Zipcar implies a service related to cars and speed but it doesn’t directly describe a car sharing service.

Trademark law may also protect arbitrary or fanciful names, which have little or no relationship to the goods or services they identify.

Fanciful and arbitrary names are the most distinctive and strongest type of marks.  Fanciful names are often made-up names that have little relationship to the products.  For example, ZYNGA for on-line gaming services is fanciful.

An arbitrary name is a word that is used in a strange way.   One of the most famous arbitrary trademarks is the name “Apple” for computers.  Other arbitrary names include Google (search services); FastCat (software); Mean-Eyed-Cat (bar); and RedHat (software).  Fanciful names are also strong, protectable marks, which are usually made up names with no dictionary meaning.

Fanciful and arbitrary marks only gain meaning through commercial use and advertising that associates the name with the goods or services being sold.  Fanciful and arbitrary names can be immediately protected upon commercial use.

When I explain the distinction about types of brand names to entrepreneurs, many who want to use descriptive names are discouraged.

When creating your brand name it is important to brainstorm wildly.  Your kookiest name may be fanciful or arbitrary and your best, most protectable name.

It can be challenging to dream up a protectable name but many entrepreneurs are doing a great job.  See Women 2.0 Founders to read about women entrepreneurs with fanciful, arbitrary and suggestive startup names like Chomp, Buluga, Wildfire, TaskRabbit, Wanderfly,CloudFlare, and MicroMobs.

Jill Hubbard Bowman is an intellectual property lawyer who helps startups create more valuable companies through intellectual property law.

A common misconception by many entrepreneurs is that they should use a name that describes their products or services.  Many want potential customers to immediately know what they are offering.  Some use generic names because they want to generate more website traffic from key word searches.

If you want to build a scalable, highly valuable company, however, choosing a descriptive brand name is not a good strategy:

Trademark law does not protect generic or merely descriptive brand names.

A generic name is the common name for the goods or services.  A name is descriptive if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods or services.

The PTO will not register a generic or descriptive name as a trademark and the courts won’t stop other companies from using it.  For example, Texas Digital Library couldn’t get a trademark for its name because the name merely describes a digital library in Texas.  The name “Group Sales Box Office” was also was found to be descriptive of theater ticket sales services.

If you are building a scalable company that has to compete in national and international markets, trademark protection can be critical.  In the dog-eat-dog world of business, you need to be able to stop companies who are selling similar goods and services from freeloading on your hard work and resulting goodwill to confuse potential customers.

A company with a federally registered trademark (or service mark) can stop cybersquatters and copycats from using confusingly similar domain names, product names, and business names.

It’s real legal power that even a tiny company can wield.

When choosing your brand name, you should ask:

Does this name merely describe my company’s goods or services?

If it does, then don’t use the name for your brand.

If in doubt whether your proposed name is merely descriptive, consult the dictionary definition of the words of your proposed name.  If the dictionary definitions describe the goods or services that you are selling, the Trademark Office and courts won’t allow you to get legal protection for the mark.  In short, if you want to build a scalable company, don’t waste your time using a generic or descriptive name.

See related posts:

How to Avoid Trademark Infringement When Choosing Business or Product Names

Consider Whether You Can File a Federal Trademark Registration

Jill Hubbard Bowman is an intellectual property attorney who helps startups protect their IP and avoid infringement.

If you’re like most folks, you may be annoyed by those boxes you have to check to agree to a website’s Terms of Use when you register.  You may be thinking, “What’s all the fuss about?”

The fuss has to do with protection from the onslaught of potential legal claims that may be brought against a website owner.  The Wild, Wild, Web of mass communication can lead to far reaching and unprecedented liability for a broad range of legal claims from copyright and trademark infringement to tort city — defamation, trade liable, unfair competition, tortious interference with contract and prospective business relations, infliction of emotional distress, misrepresentation, fraud, and violations of rights of publicity and privacy just to name a few.

If your business is based on a website, especially if you allow users to post or upload content onto your site, your website’s Terms of Use can provide critical, legal protection.

Here’s how.

A website’s Terms of Use (or Terms of Service) is actually a legal contract between the website owner and the user.  US courts will recognize a properly drafted Terms of Use as a legally binding contract and enforce the terms and conditions that can limit a website owner’s potential legal liability.  There was a brouhaha about the enforceability of these types of contract in the early days of the Internet because a Terms of Use contract is a legal odd duck.  First, the site owner may not even know the identity of the other party to the contract — the website user.  The website owner essentially sends out an offer to use its website and people across the world may accept.  This acceptance by use is good enough to form a legal contract, but making a user click a box is an even better form of acceptance– hence the boxes required by the wary lawyers.   Second, the terms of the website contract can be unilaterally changed by the website owner at any time by its very terms.  Seriously, this freaks out old school attorneys who don’t practice Internet law but it’s very useful for website owners.  Terms of Use may be legally odd but they have been enforced by the courts.

Terms of Use can protect and help a website owner in many ways:

• A Terms of Use contract can limit and give only a specific court in the website owner’s backyard power over a far away plaintiff’s legal case.  This is critical for a website owner who doesn’t want to face litigation in any state  (or fight jurisdiction).  An arbitration clause in a Terms of Use may also get a website owner out of a nasty class action suit because of a lack of jurisdiction.
• The Terms of Use contract can also have a very broad disclaimer of warranties related to the terrible things that can happen because of using the website and relying on the correctness and safety of its content.  Hurt people want to blame someone and The Terms of Use can legally shift and limit blame.  Malware anyone?
• The Terms of Use can limit permitted conduct and content in social sites and let the companies shift blame for bad things including tortious conduct.  I love the Terms of Use for on-line dating sites.  Good luck trying to sue them for emotional distress from on-line social harassment or a bad date.  (ISPs may have some limited immunity under the Communications Decency Act for third party torts but it is complex and not well established.)
• The Terms of Use can also set up a DMCA Notice and Take Down procedure that can help shield a website owner from copyright infringement by users who upload infringing content.  For a safe harbor, however, you must strictly follow the DMCA rules.  See Heather’s post about getting DMCA protection.
• A Terms of Use contract can also give a website owner a license to the copyright or trademark rights of an owner who uploads it onto the website, once again preventing infringement claims.  A Terms of Use contract can even transfer IP ownership rights of uploaded content to the website owner.  Facebook tried it.  Apparently, some IP lawyer for Facebook thought it would be a good idea if Facebook owned the IP to the uploaded content and it changed its Terms of Use contract to include an IP assignment.  Some artistic Facebook users got hopping mad at the change and Facebook changed its term back to a license.
• Website/software owners can also license downloaded software in its Terms of Use and restrict how others use the software.
• Website owners can also require the users to give warranties that can give the website owner a basis to sue if the warranties are breached.  An example of a website user warranty would be a promise to obey the law.
• My favorite is that a Terms of Use contract can limit DAMAGES.  Yes, it is possible to greatly reduce a possible damage award using a contract term.  A Terms of Use contract can include this big disincentive to sue.  YEA!!!  No website owner wants to be sued.
• I also love that some sites require the website user to INDEMNIFY THEM for claims.  They really pass the legal buck.

There are many ways a Terms of Use contract can protect a website owner but the specific terms need to be based on the activities and interaction on the website.

For kicks, you may want to actually read the Terms of Use before you click the box.  It could enlighten you about the legal rights you are giving up and bestowing.

Jill Hubbard Bowman is an intellectual property attorney who helps website owners protect themselves with contracts.

Obviously, launching a website requires a domain name, and picking a domain name may be your first step toward trademark infringement.

You want to avoid trademark infringement if you don’t want to:

• take down your website to avoid litigation with a trademark owner or
• have the domain cancelled or transferred to a federally registered trademark owner through a UDRP procedure.

It’s an expensive hassle to have to redo and relaunch your website because your site’s domain and name infringes a trademark.

Before you pick your domain name, make sure you do a trademark search on the free federal trademark registry (TESS).   If a company with a similar business has registered a trademark for a similar name (not just identical), you may be committing trademark infringement when you launch your website with a name that would likely confuse consumers as to the source of the advertised goods or services — the standard for determining trademark infringement.

Also search Google for a similar business with a similar name.  They may be claiming state trademark rights.

Do not use a similar name if you want to be safe from taking a bath in legal hot water.

If the .com is taken, BEWARE.

Make sure you look and see what business, if any, is using the .com domain.  If a similar business is using the name as a trademark, you can’t just use the .net or .co, even though they may be technically available.  You can’t just spell the name differently or add the word “the” or “website” or “online” and use the same name with a slightly different domain.  (Note that really descriptive names can’t be used as trademarks. If the name is not being used a trademark, you can use it.  But tread carefully, this analysis may be difficult.)

Again, the standard for trademark infringement is “likelihood of confusion.”  The name doesn’t have to be identical to infringe!  If your website name sounds alike or the dominant part of the name is too similar, you may be infringing.

I know that picking a website name is hard.  If your brand is important to your company, dig deep and try to find a name that isn’t descriptive or overtly sugestive.  With a little effort, you may come up with a better name and a stronger mark.  And when you do, protect your website by registering your name with the Patent and Trademark Office.

Moreover, avoid copying other websites. Other parts of a website may also be protected by trademark law including the “look and feel,” logos, and important tag lines.

Avoiding trademark infringement is important to maintain the value of your website and avoid legal problems.

For related posts on picking a name see the following posts:

• How to Avoid Trademark Infringement When Picking Business and Product Names
• Consider Whether You Can or Want to File a Federal Trademark Registration

For more posts on website issues:

• My Website’s Software Foundation:  Do I Own the Code or Can I Sell My Site?

Unless you’re living in the dark ages, your business has a website.  Unfortunately, many companies, even big companies, don’t spend the time to really consider the legal issues and potential liability related to their website.

Websites have a myriad of  issues, many of which relate to intellectual property.  Indeed, analysis of the legal issues on a website would be a great law school final exam.

If your business is based on a website, it’s important to understand the critical legal issues.  Of course you want to avoid potential legal liability, but most importantly, if you ever want to sell the site, you must make sure that you own or have the right to use every element of it and the ability to convey the whole thing for a big hunk of cash.  If your site’s IP is a muddled mess, it may kill a deal or greatly reduce the potential sale price.  Worse yet, if your site infringes the IP rights of others, you may owe more than its worth.

If your business only uses its site for advertising, you still want to make sure that you don’t get in legal hot water.  You want to comply with the law and avoid IP infringement.

The next five posts will address some of the critical website legal issues including:

• My Website’s Software Foundation:  Do I Own the Code or Can I Sell It?
• Website Trademark Issues
• Website Copyright Issues
• How Your Website’s Terms of Use Can Protect Your Company From Legal Liability
• Getting a Safe Harbor for Your Website Under the DMCA

In this series, I’m focusing on issues that you can control.  Stay tuned if you want to protect the value of your website and avoid legal liability.

Jill Hubbard Bowman is an intellectual property attorney who helps startups and emerging growth companies own and protect their IP.

The following is a condensed version of one of my most popular early posts.  It summarizes some of the biggest mistakes I’ve seen as a lawyer.  I’ve spent many years fighting in court about intellectual property ownership and cleaning up IP messes in startups.  I really prefer prevention.  In this post, I’ve linked to some of my later posts that explain the topics in more detail and give specific tips about IP protection and avoiding legal liability.

In the many years I’ve been practicing intellectual property (“IP”) law, I’ve seen a wide range of mistakes and bad practices that have cost emerging growth companies millions of dollars.  In many cases, startup founders could have avoided expensive, thorny legal problems with a little information about IP law and some simple precautions.

If you are starting a company, here are five of my favorite reasons to learn about IP law.

Learn more about IP law if you want to:

Keep the intellectual property that you create for your startup free of ownership claims by your former employer

If you are working on your new venture while employed by another company in the same industry, you should watch out. It’s important to learn about IP law if you want to make sure the intellectual property you create for your new startup won’t be the subject of ownership claims by your former employer.  This is a popular type of litigation in Silicon Valley.

Knowing how to keep and carve out the intellectual property rights to what you create for your new company can be critical for your startup’s ultimate success. You need to know what information you can use from your employer without running the risk of trade secret misappropriation claims.  You need to take precautions to narrow the net of what your former employer may claim.

For more information on this topic see the following posts:

• Analyzing the Risk That My Current Employer May Claim Rights to My Startup’s IP
• Bratz Doll Designer’s $100 Million Dollar Mistakes
• Trade Secret Law 101:  Why Entrepreneurs Should Care About Trade Secret Law
• Minimize the Risk of Being Sued By Your Former Employer
• Preventing Your California Employer From Owning Your Inventions

Learn more about IP law if you want to:

Increase the odds that you can use your company and product names without being stopped by another trademark owner

After picking names you love for your business, products, and services, incorporating your company, building a website, and working hard to promote your brand, it is highly disturbing, disappointing, and expensive to have a trademark owner accuse you of trademark infringement and demand that you stop using your business name and take down your website.

And unfortunately, it happens frequently to uninformed entrepreneurs.

Learning about trademark law and doing some basic groundwork before selecting business and product names can save you from big headaches and expenses down the road.  You can greatly increase the odds that you can use your company and product names without being stopped by another trademark owner.  Few people want to start over from scratch.

For more information on this topic see the following posts:

• Why It’s Important To Consider Trademark Law When Picking Business and Product Names for Your Startup
• How to Avoid Trademark Infringement

Learn more about IP law if you want to:

Make sure your startup owns the intellectual property rights created by its founders, independent contractors, and employees

Many, many startups don’t own the intellectual property rights to intellectual property created by its founders, employees, web designers, logo designers, software developers, and other independent contractors.

It doesn’t matter that your startup paid for the creation of the work!

Failure to have signed, written agreements with the proper legal language that transfers intellectual property rights to the startup from everyone who creates IP for it is a classic mistake.  Many of the legal rules about IP ownership are counterintuitive, highly specific, and complicated.  Moreover, many self-drafted contracts and random contracts from the Web don’t have the proper IP assignment language. Mentioning who will own what is not enough.  Bad contracts will give you a false sense of security and really screw your startup over when an investor actually hires lawyers to do due diligence.

It’s important to learn about intellectual property law to understand what you need to do to own IP rights.

For more information on this topic see the following posts:

• The Biggest Startup Blunder:  Failing To Secure Ownership of Your Startup’s IP
• Why Copyright Assignments Can Be Critical For Your Startup
• Who Owns the Rights To Custom Software

Learn more about IP law if you want to:

Minimize the chance of liability for IP infringement

Ignorance is not bliss.  It can get you sued.

And as some unfortunate software developers learned, trade secret misappropriation can even land you in jail.

Read the liability sections of the free ebook, IP Law For Startups FAQ, at iplawforstartups.com to learn more about how to avoid legal liability for trade secret misappropriation, trademark infringement, copyright infringement, and patent infringement.

Learn more about IP law if you want to:

Get legal protection for intellectual property that is created for your startup

Different intellectual property laws have specific requirements for obtaining legal protection.  To get protection, you must follow the rules. You don’t want to blow it and lose protection for your million-dollar invention or product because you didn’t know what you needed to do.  Courts don’t protect the careless.

To learn more about inexpensive trademark, trade secret, and copyright protection, see the following posts:

• Federal Trademark Registration
• Tips for Identifying and Protecting Trade Secrets
• Copyrights and Licenses

Learning about IP law is more interesting than you may think when you have your dream business at stake.  With a little information and some basic steps, you can protect your intellectual property and avoid legal liability.

Jill Hubbard Bowman is an intellectual property attorney in Austin, Texas.  Jill helps startups protect their intellectual property and avoid legal liability.

I know that proper use of trademarks and service marks gets confusing for many entrepreneurs.  The following is a simple and handy guide on the proper use of the marks in your business.  It’s important to review your website and marketing material and make sure that you are preserving potential legal protection for your marks.

Trademarks and service marks are essentially brand names.  A mark identifies and distinguishes products or services of one company from the products or services of others.

Trademarks identify goods.  Service marks identify services.  In contrast, a trade name is a name that identifies a business.

Confusingly, sometimes the same name may be a trade name, a trademark and a service mark.  GOOGLE is a trade name, a registered trademark for mugs, bags and t-shirts, and a registered service mark for search engine services.

A critical issue is that improper use of a mark may cause the loss of legal protection.

A federal registration may be denied because the owner used the mark in a generic way to describe its goods or services.  Moreover, a court or the PTO may determine that even a registered mark has become generic and therefore free for all to use.  Once upon a time, aspirin, escalator, and cellophane were all trademarks.  Eventually, the names began to represent the goods rather than the source of the goods and trademark protection was lost.

Improper descriptive use by the trademark owner in advertising or other materials is a factor in deciding whether the name will get legal protection. Widespread use of the mark as the common name for similar goods or services may ultimately allow free use of the mark, even by competitors.

A key issue is whether the public understands whether the name is a common name or a brand name.

If the public thinks the name is the common name—like aspirin—then the law will not protect the mark from competitive use.  But if the public thinks the name is a brand name, trademark status may be preserved.

Proper Use of a Trademark or Service Mark

1.  Use the mark with a generic term

To preserve legal protection for a brand name, the mark should be used in conjunction with a generic term, like using the mark Kleenex with tissue.  Kimberly-Clark Worldwide, Inc. is very careful to write:  Kleenex tissue or Kleenex brand tissue.  If you use the common name in conjunction with your brand name it is far less likely that your brand will become the common name. Your brand will be seen as separate and distinct from the common name.

Remember, generic or descriptive names do not have trademark protection upon initial use.  Generic names may never be a trademark.  Descriptive names may only receive trademark protection after they become famous for identifying the goods as coming from a single source.

2.  Use the mark as an Adjective NOT a noun or verb

Use the mark to modify the generic term for the goods instead of describing the goods.  This point is similar to the previous one.  An example is Google search services.  Google needs to be careful that google doesn’t cross the line into becoming the common noun and verb for using any search engine.

Also, don’t use the mark as a possessive or plural.

3.  Make the mark look distinctive

To preserve protection, it is good practice to make the mark look distinctive.

Good ways to distinguish a mark include:

• Capitalizing the mark;
• using color; or
• using stylized lettering or a special font.

4.  Use the TM or SM symbols

When you initially claim use of a mark as a brand name, after the mark you can use the ^TM symbol for goods and ^SM for services.  You don’t need to wait until you have filed a registration.

After receiving a federal registration, you can use the ® symbol.

With a little bit of care, you can preserve the value of your trademarks and service marks.

For related posts on Trademark Law:

How to Avoid Trademark Infringement When Selecting Business or Product Names

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

The following post discusses Brand Name Tips 2-4.  My last post discussed Tip 1:  Consider Whether You Can or Want to File a Federal Trademark Registration.

When picking a name that describes your products or services, it’s important to do some preliminary work to increase the odds that you can use the name and decrease the odds that you will be accused of trademark infringement.

Getting a cease-and-desist letter from a trademark owner alleging that you are infringing their trademark may make you scream.

Changing your name after you’ve spent time and money developing your brand is frustrating.  With a little knowledge and planning, however, you can decrease your risk of trademark infringement.

Incorporation Issue. When you incorporate your company, it’s important to note that your corporate attorney will probably not look for potentially conflicting federal trademarks or conflicting names in other states before filing your incorporation paperwork.

Watch out!  You may be able to incorporate in one state and use a business name that may describe your products or services and infringe another company’s federally registered trademark or service mark.  This is a problem if you want to advertise on the Internet and sell your products or services nationally.

Professional Trademark Search. When picking a business or product name, the safest approach is to hire a professional trademark search firm to conduct a search for federal and common law trademarks that are identical or similar to the name that you want to use.

Realistically, a professional trademark search may be too expensive for your startup’s budget.

The following tips explain shortcuts and strategies that can help you identify major conflicts when choosing a business or product name.

Trademark Infringement.

IMPORTANT—The following is the test for determining federal trademark infringement:

Whether your use of the mark is LIKELY TO CAUSE CONFUSION among ordinary purchasers as to the source of the goods or services.

(Note federal trademark infringement is just one possible cause of action among many.  You may be liable for multiple other legal violations based on similar facts.)

Don’t use a name that is confusingly similar or identical to a name associated with comparable goods or services!

You need to watch out for commercial use of identical names or names that are confusingly similar.

I know the standard about confusion is somewhat confusing.

Just make sure that you are not confusing potential customers as to the actual source of goods or services.

You don’t want people to confuse your products with another merchant’s products.

Also, you don’t want to use a name that is similar to a famous mark even if your goods are not similar.  You may be liable for trademark dilution.

Damages.  In the event of a claim of trademark infringement, the damages may be far higher than you expect.  A plaintiff may get injunctive relief, damages, profits, attorneys’ fees, corrective advertising and possibly even a product recall.

It is best to stay clear of potentially conflicting marks, especially marks used by direct competitors.

Tip 2.  When picking a business and product name, go to a domain registration site like Go Daddy and search for the name that you want to use.

It can save you time and hassle to start with a domain search on GoDaddy.com regardless of whether you want to build a website around the name.

Check out whether any of the domains are taken.

If the dot com domain for the name that you want to use is taken, this is a BIG RED FLAG!

Check out what sites if any are using the name in a domain.

Check out whether the domains for close variations of the name are taken and whether there are associated websites.

Are the sites selling goods or advertising services?

Determine whether they are selling similar goods or services.

Determine whether there is a likelihood of confusion as to the source of goods or services between the merchant using the name and your products or services.

If ordinary purchasers may be confused as to the source of goods and mix you up with the other merchant, beware.  The prior user may accuse you of trademark infringement.

Even if a mark is not federally registered, common law rights arise upon commercial use of a name and prior use may cause future legal problems.

It’s bad business to infringe another’s trademark and it can get you sued.

Further, to protect your brand, you will want to register the domain names that surround the name you choose.  (I’ll discuss the problem cybersquatting in a later post.)  But finish your preliminary searching before you pay for domain registrations.

Tip 3:  When picking a business or product name, go to USPTO.gov and use TESS to do a search for federal trademark registrations on your proposed name.

The PTO has a free, easy, on-line way to search for previously registered and pending trademarks with TESS (the Trademark Electronic Search System).

Go to USPTO.gov.

Under the center section, “Trademarks,” click on number 2, “Search Marks.”

In the “Select The Search Form” box, click on “New User Form Search (Basic).”

In the search term box, put in your proposed business or product name.

(You can also search on mark owners and put in your potential competitors to see their registered marks.)

Click Submit Query.

TESS will then retrieve any relevant hits, if any.

If you see “No TESS records were found to match the criteria for your query,” it means it didn’t find pending or registered marks matching your name.

If a table with names appears, click on the links to see the associated goods or services.

If the mark is LIVE, the registration is current. But watch out! A DEAD mark may still be in use and the owner may be relying on common law rights.  Be sure to check whether the mark is actually being used in commerce.

Tip 4:  Do a Google search on your proposed names.

Check for merchants who are using the name for goods or services.

If a lot of businesses are using similar names, your mark will be weak and your protection minimal.  Moreover, you may be at risk of allegations of trademark infringement from prior users.

Look for merchants selling similar goods or services using an identical or similar name that is likely to cause confusion.

It is worth you time to review any hits.  A little work now can save you a lot of hassle later.

Tip 5.  Make a record of your pre-name selection process.

Write down and date what you did before selecting your final name.

You want to create evidence that you had a good faith basis for selecting your name and that you didn’t intentionally use a mark that is likely to cause confusion with a mark being used by another merchant.

• Print out your TESS search results.  Make notes about your reasoning and conclusions.
• Makes notes about your domain name and Google searches.
• Put your preliminary search records in a file and keep them.

Finally, review your search results and think carefully about the final name.

Sleep on it.

Consider filing a federal trademark registration.

With a little preliminary groundwork, you can increase the odds that you can use the name that you want to use and minimize your risk of trademark infringement.

You may want to check out the prior posts in this Startup Launch sub-series about picking business and product names.

Why It’s Important to Consider Trademark Law When Picking Business and Product Names for Your Startup

Tip 1:  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.