Your business is growing, and along with it, your brand’s reputation is gaining traction. You decide you need to protect your brand, but when you try to register your trademark, you are told that it is not registrable or that it infringes on an existing registered mark. Or, out of nowhere, a competitor you have never heard of sends you a cease and desist letter alleging trademark infringement and demanding a name change. You are left choosing between the cost of fighting back and the cost of discarding the brand you have worked so hard to build. Was this avoidable?
While some trademark risk may be inherent in growing a successful brand, that risk can be mitigated, and mitigation starts with choosing the right name for your business. An important consideration to keep in mind before settling on a name is whether the name is registrable as a trademark, should you choose to pursue registration in the future. Generally, registrability of a mark will depend on its availability and distinctiveness.
Do not confuse availability for formation purposes with availability for trademark registration purposes. Just because your company’s name was available with your secretary of state when you formed an LLC, for example, does not mean it will be available for trademark registration with the United States Patent and Trademark Office (USPTO). Clearing a mark for registration with the USPTO is a legal challenge unto itself. Generally, it involves checking for availability using online tools before obtaining reports of registered (and unregistered) marks bearing similarities to yours. Your attorney will then assess the likelihood of confusion between those marks and yours to determine registration availability.
Full-scale trademark clearance imposes costs that many choose to forgo when just starting their business, which makes choosing the right name crucial. A distinctive name will make trademark clearance and registration easier (and less costly) in the future, and it will mitigate against the risk of future infringement battles.
In general, inherently distinctive marks are easier to register with the USPTO and easier to defend against claims of trademark infringement. Inherently distinctive marks fall into three categories: fanciful, arbitrary, and suggestive. Fanciful marks are made-up names (e.g. Kodak for cameras). Arbitrary marks are those having nothing to do with the product or service sold thereunder (e.g. Apple for computers). Finally, suggestive marks are those requiring a mental leap to make the connection between the mark and the product or service sold thereunder (e.g. Coppertone for sunscreen).
A mistake that many make when naming their business is to settle on a name that is merely descriptive of the products of services they provide, rather than inherently distinctive. Although some descriptive marks (e.g. American Airlines for flight services in America) can be registered and successfully defended, their descriptiveness makes registration and defense more complicated (and more costly). To avoid downstream trademark risks, go with something distinctive.
For legal guidance on building your business’s brand, please contact Miles Williams at firstname.lastname@example.org. View our services to see how MW Legal Group can help start or grow your business.