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.