Is the name of a new business or product really that important to its success? As Shakespeare would say, “that which we call a rose by any other name would smell as sweet.” No offense to Shakespeare, but most people would agree that when starting a new business or launching a new product, the name is very important. The name gives people a first impression and is associated with the product or business forever. So choosing the right name is paramount. When deciding upon the name for a new company or product, you want to select a name that can be protected as a trademark, ensure your chosen name will not infringe another’s trademark, and take the proper steps to protect your trademark.
First, we need to cover a few basics of trademark law. A trademark is a word, phrase or symbol that is used to identify and distinguish one’s goods or services from another’s. For a business or product name to be protectable as a trademark, it must be distinctive. A name that is descriptive of the business or product cannot receive trademark protection ((Unless it can be shown that the mark has established distinctiveness through extensive use in the marketplace, which obviously will not be the case for a new company or product.)). There are three categories of distinctive marks: fanciful, arbitrary, and suggestive. A fanciful mark is an invented word like KODAK for cameras or XEROX for copiers. An arbitrary mark is a word that has an ordinary meaning but it is used for goods or services unrelated to the dictionary meaning of the word, such as APPLE for computers. Suggestive marks indicate the nature, quality or characteristic of the good or services but do not describe it, requiring the consumer to use his or her imagination to identify the characteristic. An example of a suggestive mark would be Blu-ray for high definition digital video disks. In contrast, a mark is descriptive if it describes the goods or services, such as SALTY for saltine crackers or LEKTRONIC for electronic products. So when choosing a business or product name, focus on coming up with a distinctive name.
Once you have selected a name, or narrowed it down to a few possibilities, research to make sure your choice is not already registered as a trademark or being used by someone else before you start using the name. If you use a mark that is too similar to another’s, you could liable for trademark infringement. The test for trademark infringement is whether the marks are confusingly similar for consumers, which takes into account the goods or services to which the marks are applied. For example, if you choose the name APPLE for an electronic device, accessory or electronics company, that would be confusingly similar to APPLE computers and you would be liable for trademark infringement. However, APPLE for tutoring services likely would not be confusingly similar. It is important that you take the time to do the research before you settle on your name. It’s better to put in the time on the front end to research and ensure your chosen name will not infringe rather than find out after you’ve already invested significant time and money in the name chosen.
The first website you should search is the United States Patent and Trademark Office (“USPTO”) website at www.uspto.gov. The USPTO site allows you to search registered trademarks and marks that have been allowed. Texas also has a searchable database of registered Texas trademarks at www.sos.state.tx.us. You can also use a search engine such as Google or Bing to find other companies or products with similar names that do not appear in the USPTO or Texas searches. If you find other marks that are the same or similar to your chosen name, you should consider choosing a different name or consult an attorney to get an opinion on your liability for trademark infringement if you continue with your chosen name.
After you have settled on the perfect name for your new business or product, the next step is to protect it. It is important to note that simply adopting a distinctive mark, affixing it to goods and selling those goods grants you common law trademark rights and you can mark your product with a “TM” (“SM” for marks used for services). However, common law trademark rights are limited to the same type of goods or services and to the geographic area in which you are using the mark. To obtain broader protection, consider registering your mark with the USPTO or Texas Secretary of State.
Federal registration with the USPTO is available for trademarks used in interstate commerce. For example, if the goods on which the trademark is used are sold between two or more states, this would qualify. A federal trademark registration grants the owner of the mark rights nationwide. Specifically, a federal registration puts the rest of the country on notice that you claim ownership of the mark and creates a legal presumption that you have the exclusive right to use the mark nationwide in connection with the relevant goods or services.
To register your mark with the USPTO, you must file an application with the required information and pay the necessary fees. If you have already used your mark in interstate commerce, you can file a use-based application. If you haven’t yet used the mark in interstate commerce, but plan to do so in the near future, you can file an intent-to-use application. Both types of applications will be assigned to an Examiner who will search the USPTO database for similar marks and compare the search results with your mark. If the Examiner believes your mark is too similar to another mark and would cause confusion with consumers, you will receive what is called an Office Action detailing the issues. You will then have a chance to respond and correct the issues. Once the mark is cleared by the Examiner, the next step depends on what type of application was filed. If you filed a use-based application, your trademark is registered and you can begin using the ® symbol (( The ® symbol may only be used on marks that are registered with the United States Patent and Trademark Office.)) on your products. If you filed an intent-to-use application, the mark will be allowed and you will have six months, with available extensions, to file a declaration of use (stating that you have used the mark in interstate commerce). After the declaration of use is filed and accepted, the mark will be registered and you can begin using the ® symbol.
For those only selling or conducting business in Texas or who have not yet entered into interstate commerce, a Texas trademark registration is available. Registering your trademark with the Texas Secretary of State grants rights only in Texas, but it serves to put the rest of Texas on notice that you claim ownership of the mark in Texas and is rebuttable proof that you have the exclusive right to use the mark in Texas in connection with the relevant goods or services. To register your mark with the Texas Secretary of State, you must file an application with the required information and pay the necessary fees. You must be using the trademark in Texas at the time you file the application. The process is basically the same as for federal registration, and once the mark is cleared, it will be registered with the Texas Secretary of State.
Lastly, one helpful tip when filing trademark applications: for both federal registration and Texas registration, you receive broader protection by registering the words of your mark alone. For example, if your logo is a globe with the word DRAGON on it for your global networking software, obtaining a registration for the word DRAGON for that type of services won’t limit you to the font, color and design as registering the entire logo would. Of course, registering both covers all bases, but many fail to realize the broader protection available and unnecessarily limit their trademark protection.
So, in conclusion, when choosing the name for a new business venture or product, follow these simple guidelines: 1) pick a distinctive name, 2) make sure your chosen name does not infringe another’s trademark, and 3) protect your name!
An associate at Carstens & Cahoon, LLP, Mandy Jenkins’ primary area of practice is intellectual property law and litigation. She has experience in patent and trademark prosecution, trade secret and licensing matters, and in all phases of litigation.This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com.
by Mandy K. Jenkins