If you’re starting a small business or developing a new product, you need to give it a name.
That name will serve as your brand name and has the potential to become highly valuable. It is essential to choose something remarkable.
However, picking an amazing brand name isn’t enough to position your business or product for success. Before you invest time and money into developing a brand reputation around that amazing name, there are some critical brand name legal questions you need to answer to avoid getting into big and expensive trouble later.
Ask These Brand Name Legal Questions First
Do You Want to Protect Your Brand Name?
Do you want to ensure that no one else in your industry can use the same brand name? Consider the confusion that could arise for consumers if both you and a competitor share the same brand name. What happens if the competitor’s products are of lower quality than yours? You certainly wouldn’t want consumers to mistakenly believe that those inferior products originated from your company.
The sole way to completely safeguard your brand name and prevent this issue is to register it as a trademark with the U.S. Patent and Trademark Office (USPTO).
Is the Brand Name Also Your Business Name?
If you’ve registered your business name in your state, you can start doing business. However, registering your business name (or “trade name”) is not the same as registering the brand name as a trademark.
Yes, your business name and brand name could be the same, but a trade name identifies the commercial entity while a trademark identifies intellectual property that can be protected under U.S. trademark laws. Make sure you protect your business name as a brand name, too.
Is the Brand Name Descriptive and Obvious?
Does your brand name clearly describe the products or services it represents? Is it immediately apparent to consumers what your business, product, or service offers based on its brand name? If you answered “yes” to either of these questions, protecting your brand name will be challenging, even if you are able to obtain a federal trademark. The less descriptive your brand name is, the stronger it becomes, leading to greater protection for it.
For example, The Pool Store is extremely descriptive. If this store sells pool supplies and related goods and services, it would be nearly impossible to trademark this name. However, a pool supply business named Pulique, which doesn’t directly and obviously describe the products or services being offered, might be trademarkable and protectable.
Does the Brand Name Include a Person’s Name or Surname, Geographic Location, or Generic Term?
If your brand name features a person’s name or surname (including your own), a geographic location, or any generic term (such as “pool” or “store” from the previous example), obtaining trademark protection will be more challenging. In some cases, you may not be able to secure protection for the brand name at all.
For example, The Pool Store couldn’t simply change the brand name to Johnson’s Pool Store or Newtown Pool Store and expect to be able to trademark it. The name would still be considered too descriptive and generic to trademark.
Is the Brand Name Distinctive?
Distinctiveness is the contrary of descriptiveness. A brand name that is descriptive lacks distinctiveness, and even if you manage to obtain a trademark registration, the protection for your mark will be limited. To secure the maximum protection for your brand name, select a name that does not in any way describe the goods or services offered.
Here are three ways to choose a strong and distinctive mark:
- Use a suggestive name that takes some thought to figure out what it represents, like Greyhound or Chicken of the Sea.
- Use an arbitrary name that isn’t related to your industry at all, like Apple or Amazon.
- Use a fanciful or coined name that you make up, like Google or Exxon.
Does the Brand Name Give You a Competitive Advantage in the Market (or Could It Do So in the Future)?
One of the main reasons people trademark and protect their brand names is because those names give them competitive advantages in the marketplace. For example, there is no doubt that having the Apple name on a product gives it a competitive edge.
Even if your brand name has not yet established a reputation in the marketplace, the goal of brand building is to create that reputation. Protecting your brand from the very beginning is crucial; otherwise, you risk wasting your hard work and losing your competitive advantage.
Does the Brand Name have Commercial Value (or Potential Commercial Value)?
Your brand name is like an energy source for your business.
Digging back into science class, you might remember learning about potential energy (i.e., stored energy). Similar to that concept, your brand name is bursting with potential commercial value. If you don’t trademark and protect your brand, you’re not giving it a chance to store and later use that potential commercial value.
Are You Willing to Protect the Brand Name?
Here’s a hint: Your response to this question should be affirmative. Although trademark registration can be costly for small businesses, you will maintain your trademark rights indefinitely, provided you file the required renewal documents and continue to use your mark in commerce as it was originally registered.
Federal trademark filing fees start at just $225. You should also conduct a comprehensive search before you file a trademark application (see #10), which can cost anywhere from $500 and up. Spread that cost over multiple years that you’re in business, and you’ll see that trademarks are actually very affordable.
It’s hard to argue against getting trademark protection as soon as possible when you consider that protecting your brand could save you thousands or millions of dollars in the future if you’re accused of infringement.
Are You Willing to Enforce Your Right to Protect Your Brand Name in the Future?
If you’re not willing to enforce your trademark rights and protect your brand name in the future, then there is little reason to trademark it. The value of a trademark gives you the exclusive right to use your mark in specific lines of business. Trademark registration is intended to reduce consumer confusion so there is no question of who and where goods and services come from.
If none of that matters to you, then trademark registration isn’t necessary. However, you can bet that it matters to other businesses. Unfortunately, your entire business is probably in trouble if none of that matters to you, so registering your trademarks is probably the least of your worries.
Is Anyone Else Using the Brand Name?
Being first is not always sufficient in branding. U.S. trademark law grants rights to the initial individual or entity that uses a mark (including a brand name) in commerce. Therefore, do not assume that you can use your brand name without facing potential trademark issues later on.
In other words, clearing your business name as a trade name or doing a Google search or a search of the USPTO database to make sure no one else is using your brand name isn’t good enough. You need to conduct a comprehensive search of active and inactive trademarks, business names in all 50 states, social media profiles, domain names, common law, and more.
This is a crucial area where you should invest both time and money, as someone else may already be using your brand name. If they have used it before you, they will hold the trademark rights to it.
The lesson to learn is simple. Don’t fall in love with a brand name until you answer the critical brand name legal questions above. You just might have to change that amazing name.
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