Let’s say you’re a Seattle startup that plans to manufacture and sell hoverboards. You’ve got a business idea, but no name for it.
So you gather your team around a whiteboard and start scribbling down potential names.
You have a nagging feeling that you’ll need to trademark your name at some point. But you don’t see a reason to call a lawyer just yet—after all, you’re just spitballing here, right?
Sure, but before you can spitball productively, you need to understand what kind of name may qualify for trademark protection and how to determine whether the name you have in mind is even available for trademark registration.
That’s the focus of today’s post.
Your Name Should Be Distinctive
The key for getting trademark protection for your brand is having an “inherently distinctive” name. The reason for this, in large part, is that the United States Patent and Trademark Office (“USPTO”) wants to protect consumers from confusion, and having an inherently distinctive name makes it less likely for your company to be confused with another.
There’s no ready-made formula for assessing distinctiveness. Instead, it’s judged on a spectrum ranging from “inherently distinctive” (good) to “merely descriptive” (bad) marks.
One way to create a mark that’s inherently distinctive is to make up a word (this type of mark is referred to as “fanciful” or “coined”). It may sound like silliness, but companies like Xerox and Kodak have made up their names, so why can’t you? In fact, making up a name can be a helpful reminder that a name that’s unfamiliar may leave more of an impression than something people are accustomed to seeing.
Another way to qualify as an inherently distinctive mark is to use a term with an established meaning in a non-descriptive, arbitrary way (this type of mark is referred as “arbitrary”). A prominent example of this is the technology company Apple using the well-known fruit as its company name, despite not growing, selling, or in any way relating to the fruit.
A third way is to use a name that alludes to something about the company’s product or service without being merely descriptive (this is known as a “suggestive”mark). A classic example of this is Microsoft, which is suggestive of software for microcomputers.
Tip: Names that are “suggestive” of the company’s product or services are often the best way to strike a balance between protecting your mark and marketing your brand.
Your Name Should Not Be Descriptive
For many people, using a name that doesn’t directly describe their product is counterintuitive. They expect that a descriptive name is the best bet (e.g., “Hoverboard Heaven” for a company that sells hoverboards).
While descriptive names can be easier to market, given that they describe something essential about the product, they’re usually a bad bet when it comes to trademark protection.
In fact, descriptive marks don’t qualify for trademark protection without a showing of “acquired distinctiveness”—which can take years of use in the market before being available. Because of this, as a general rule, it’s cheaper and easier to get rights in a distinctive mark than in a descriptive mark.
Tip: Generic names, like “leather” or “software,” also can’t be trademarked.
Your Name Should Be Available
You may come up with a great name that you’re sure is “inherently distinctive.” But don’t go and print business cards just yet.
Before you start investing in branding, you have to make sure no competitor is using your name (or something very similar to it). The starting point for this is Google or another search engine of your choice. If you’re unable to find any competitors using your name, then it’s time to conduct a full-blown search.
At this point, you should consider having an attorney conduct a comprehensive trademark search and clearance of the mark. To do this, your attorney will search the USPTO database, as well as other databases, to determine whether any of your competitors are using the same or a similar name.
Related: Trademark Search & Clearance
While this may sound straightforward, there’s an art not only to searching these databases but also to analyzing the results to determine whether there’s a “likelihood of confusion” with another mark—a common basis for the USPTO to reject an application for trademark registration. That’s why it’s a good idea to use a trademark attorney for this.
Once your mark is cleared for use and registration, you’re ready to file a trademark application with the USPTO.
Related: How To Register A Trademark [Step-by-Step]
Your Name’s Domain Should Be Available
It’s often important that you own the domain that corresponds to your company’s name. Paul Graham, a co-founder of Y-Combinator, put it bluntly: “If you have a US startup called X and you don't have x.com, you should probably change your name.”
This is primarily about perception. Your potential customers may be skeptical of your legitimacy if your name is X but your domain name is y.com.
While there’s no legal reason requiring your domain name to be identical to your company’s name, from a business perspective, you’re probably better off having the two line up.
Takeaways
Picking a name, as with most aspects of starting a business, requires planning and strategy. If you follow the steps in this post, you’ll increase your chances of picking a name that can be both protected through federal trademark registration and marketed to your customers effectively.
Related: Trademark Registration FAQs
