Disclaimer: This article is intended to be general information only. Nothing in this article constitutes legal advice. Please consult with an attorney before making any legal decisions.
What’s in a name? Turns out, more than you might expect – especially when it comes to your brand’s future.
For many business owners, choosing the a great name is a challenge. You want something catchy, but not too out of the box. You want something easy to remember, but not easy to steal. Most importantly, you want something that is protectable so that no one can tarnish or exploit your brand.
As you sit at your board room (or dining room) table trying to select the perfect name, you’ll take quite a few factors into consideration. For example, the availability of the “.com” domain name.
However, one of the most important, and most forgotten, factors in naming your business is finding that something can receive substantial federal trademark rights and protections.
Can’t Any Name Receive Trademark Protection?
No. United States law specifies that a brand name can be registered on the Principal Register of The U.S. Patent & Trademark Office, thereby receiving significant federal trademark rights and protection, only if the name is actually distinctive and not merely descriptive.
Why does this matter? Because a trademark registered on the Principal Register allows trademark holders to, among other things:
- Register a trademark nationwide
- File for an injunction to stop the unauthorized use of a trademark
- File a trademark or service mark infringement claim for money damages
- Stop the importation of infringing of goods, with a few exceptions
A federal trademark registered on the Principal Register can help keep your business, yours.
Trademarking a Name With the Federal Government
There are five categories that both the courts and U.S. Patent & Trademark Office use to determine whether a name is distinctive.
1. Fanciful. This refers to a name that would not be used in normal speech. For instance, you wouldn’t use the word “Starbucks” or “Kodak in a conversation with your friend unless you were talking about the brand.
2. Arbitrary. This refers to a name that is completely abstract from what is being offered. Good examples include, Amazon, Apple, or Chevron.
3. Suggestive. This marks a name that alludes to what you offer without being fully descriptive. Some examples are Liquid Paper and Mustang.
4. Descriptive. This describes specific features, qualities, or characteristics of the goods or services you provide. Trademarks that are merely descriptive, however, are relegated to the Supplemental Register, a sort of consolation prize in comparison to the Principal Register, resulting in significantly fewer rights and protections.
5. Generic. These names describe the class of your product or service. They should be avoided at all costs as they will not be afforded a trademark or service protection.
Although there are lots of factors to consider when choosing your brand name, it may be a good idea to choose a name that is fanciful, arbitrary, or suggestive over one that is descriptive or generic because of the substantial trademark rights associated with fanciful, arbitrary, or suggestive trademarks.
Why Distinctive Over Descriptive?
Some branding experts suggest that descriptive names work best in the market because they leave no doubt in a buyer’s mind about what’s being sold. Moreover, some of the most well-known brands (such as The Weather Channel, Cartoon Network, and Hotels.com) use extremely descriptive, but are trademarked on the Principal Register, so why can’t you?
Although there are big brands with descriptive names, these companies likely endured a steep uphill battle in order to secure trademark registration on the Principal Register.
The goal of federal trademark law is to first and foremost avoid confusion in the marketplace as to the source of the goods and services. Yes, some big businesses have successfully registered descriptive trademarks on the Principal Register by spending a lot of money on marketing a mark so that it acquires “secondary meaning”. But, it would be rather unfair to allow any new business to trademark a term that generally describes a product or service and would effectively preclude any other business from marketing, and thus selling or providing, an entire class of goods or services.
A Few Tools to Help
Does it feel like your hands are tied? Have you lost inspiration for finding a creative, protectable name? Don’t lose hope. There are plenty of tools available to help you find the perfect protectable business name.
Here are a few to get you started:
- Combine keywords. You know what your customers will be searching for to find what you sell. Take those search terms and plug them into LeanDomainSearch.com to find available word combinations. This can help you find unique ways to combine descriptive words into a business name.
- Think fiction. You can also use Wordoid.com for fictitious word ideas. Plug in your keywords and you’ll get unique derivations for descriptive words about what you sell.
- Have fun. Websites, such as Panabee.com, show creative, available domains. Plug in a few keywords, extensions, and more to come up with two or three word combinations. This is a fun tool to use when starting your brainstorming process.
- Check the legal status. With all the fun you’re having, don’t forget to check the legal status of the names you’re considering. Visit tmsearch.uspto.gov to make sure your name is available and/or find other names close to the one you’re considering that have been taken.
Let the Market Have the Final Say
Once you have a few good names in your back pocket, let the market have a say.
Start a few campaigns using each of the two or three business names you’re considering. To do this, you’ll need:
- Domain names
- Landing pages
Decide on a specific giveaway, such as a newsletter, download offer, or e-book. Then, set up each page to offer the same promotion on the same terms. Try not to vary any other elements besides the business name. This way, you’ll know which name resonates more with your audience, and which names fall flat.
Once you have your landing page, start promoting it using Facebook, Google, Twitter, and/or Pinterest advertising. It can be a cost effective way to find a long-term name that you can protect AND use to grow your business.
Finding that perfect protectable business name can help avoid headaches, hassle, and hardship down the line. Here’s a brief recap on how you can find a business name:
- Focus on finding a brand name that’s not merely descriptive, so that it’s easier to protect.
- Use the available tools to find clever business name ideas.
- Get feedback from the market using targeted campaigns to find the top performing brand name.