A business’ name is one of the easiest ways to develop brand recognition. With such an important step in the business plan process, how can you be sure your business name is not infringing on an existing trademark?What is a trademark?
“Intellectual Property” (“IP”) is an amorphous area of the law built to protect inventions or creations. These tangible and intangible brand assets provide economic value to businesses. Generally, intellectual property protections apply solely within the United States.
A trademark is one form of IP that serves as of brand asset for either goods or services. Trademarks can be a word, phrase, symbol, or design that identifies your goods or services so long as it is unique, distinct, and not generic. They act as the basis of your “good will” in the community.
Trademark protection begins the moment the goods are used in commerce in connection with the relevant goods and services. There are various types of trademark protections – common law, state registration, federal registration, and international registration – that all provide varying rights and limitations.
Should I be worried about company or fictitious names?
A company name – also known as a fictitious name or “doing business as” - that is used only on legal documents or contracts is not protectable as a trademark. However, if that same company name is also used in association with products or services to represent the brand and distinguish the source of the products or services in the marketplace, then it rises to the level of trademark protections.
Understanding how names are used is a key component to ensure that you are not infringing on another business’ prospective mark.
Developing a unique or distinct name is best to protect your business and the easiest way to avoid infringing on an existing mark.
The easiest method to avoid infringing on an existing business’ trademark is to create a distinct brand in your market. To be “distinct” means that your goods and services are distinguished from your competitors. Words that are considered generic are not registerable; meanwhile, descriptive marks or personal names are sometimes registerable.
With this in mind, brand names that are suggestive, arbitrary, fanciful, or coined are the strongest to register. These words are inherently distinctive because they never existed before their creation! But coming up with these types of words can be difficult! They take effort to identify and develop, as they necessarily must go above and beyond merely describing a product.
One approach is examining the goods and services you intend to work with and choose descriptive components. Once you’ve created a list, choose portions of these words and combine words to create something entirely new! Or, if you’re feeling creative, simply making up a word with no meaning or underlying logic can lead to a fanciful or coined mark.
You may be tempted to create a mark that uses descriptive modifiers because it will be easier for your customers to identify your business in the market; however, these types of fanciful and coined marks are not only the easiest to register but also the easiest way to avoid an already existing mark.
If I have a unique name, do I still need to conduct a trademark search?
You may be tempted to begin utilizing your new name in connection with your goods and services as soon as you develop it. Even where a word is seemingly unique or distinct, you should still conduct a trademark search to ensure that you will not infringe on another business’ existing mark.
Trademark searches can begin by simply utilizing web databases and search engines. These “common law searches” can include telephone listings, records, state trademark databases, and other internet sources. This is a simple and effective way to immediately identify if there are other businesses using your potential mark.
If you would like a more formal search, the United States Patent and Trademark Office (“USPTO”) makes this accessible with the Trademark Electronic Search System (”TESS”). The USPTO recommends the following steps:
- Describe the products or services being used in the connection with your potential mark.
- Identify the specific terms for the products or services using the online “Acceptable Identification of Goods and Services Manual.” This manual is available at: https://tmidm.uspto.gov/
- Determine the applicable international class for the products or services used in connection with your potential mark.
- Determine the related goods or services and their classes as advertised or sold with your product or similar products in the market.
- Develop additional spellings or phrases that may encompass your potential mark.
- Search for words with the same or similar meanings as to your potential marks.
The standard for trademark infringement is “likelihood of confusion.” The purpose of your trademark search would be to identify whether any other businesses in your market could potentially confuse customers about the origin of the product or service. This is why your search can’t be limited to identical marks – you must also search for those that are similar to your potential mark.
Is there anything else I can do?
While these suggestions will help prevent against your infringing on an existing business’ mark, no trademark search is ever perfect. By its very nature, trademark searches rely on databases, which may not always be comprehensive. Databases may not always be up-to-date or reflect every use of a competing mark in commerce. Since trademark protections attach from the first use in commerce – regardless of federal registration – there is always a possibility of missing an existing business.
Despite this, a trademark search and research is necessary to prevent problems with unintentional infringement of an existing business. Moreover, these types of searches may help you develop unique or coined terms to truly set your business apart from the competition in your relevant market! By observing the most common descriptors or phrases used in your market, you will learn which phrases or words or avoid in your final business name.
Where do I start?
Deciding on a business name is a personal and careful process. Many variables must be accounted for in the development of your business’ branding.
A licensed attorney is best suited to analyze your potential business names and advise on how to properly conduct a trademark search. A licensed attorney can also assist the development of a unique and distinct business name and advise of any potential, unintentional infringement.
Reach out to us if you are interested in learning more about developing your business name or trademark rights in an effort to develop a proactive, preventative business strategy.