Choosing a Company Name Is Hard Work
Trademark law is a maze of rules that dictate whether you can own exclusive rights to a company name or brand. Choosing a company name for trademark use involves balancing a stylistic process with a system of trademark rules. When you work through the stylistic process of choosing a brand, you want to keep the trademarking rules in mind. This way, you can choose a stylistic company name that is also protected under the trademark laws.
In my 18 years of practice as a trademark attorney, I’ve had countless opportunities to see this balancing act play out in real life.
Here’s a list of the top 10 considerations when choosing a company name for trademark use:
1. Pick a trademark that is not confusingly similar with an already existing brand – especially where the prior brand is for related goods, or the prior brand is well known.
It seems quite obvious, but in most cases, simply changing a few letters of some other brand name will not keep you free from infringement. Confusing similarity between brands is measured, in part, by comparing the elements of sight, sound, and/or meaning. Infringement can stem from a finding of similarity in any one element.
2. Don’t pick a brand name that defines or describes the goods or services you provide.
These are weak trademarks that are more difficult to protect. Examples of defining/generic terms include: BREW for beer or FOOTWEAR for sneakers. Examples of descriptive terms include LIGHT for low calorie beverages or COTTON FEEL for clothing.
3. Conduct a search before you launch your brand.
You don’t want to face changing your brand name after you spent large amounts of time and money building recognition. Similarly, you don’t want to be precluded from operating in other countries because someone else uses a confusingly similar name for related goods or services.
4. Secure registrations in the countries you sell to or expect to sell.
This will help you avoid being blocked and may help you to stop knock offs. If you seek alliances with foreign businesses, keep in mind that many manufacturers and distributors refuse doing business unless the trademark registration is in place.
5. Use trademark license provisions in your marketing and distribution agreements.
These provisions give the parties specific terms governing how they operate. They also can give the owner contractual rights and remedies that can be enforced if the deal goes sour.
6. Respect the brand by using the TM or ® designations where appropriate.
In the U.S., the TM designation tells others you are treating the name as a trademark. The ® designation tells others that the name is a registered trademark, and the ® should be used with the goods or services listed in the trademark registration. Read my other article for more information about the proper use of The Trademark Symbol – TM vs. ®.
7. Follow up by ensuring your trademark remains in use with your goods and services.
If the brand’s trademark has changed over time, or the goods/services have changed, you may need to amend the registration or apply for a new one.
8. Protect your non-trademark intellectual property by securing copyright, patent, or design patent registration where applicable.
Your product packaging artwork often screams brand identity and also should be secured to the extent possible with a copyright registration. The design of the product itself may be protected by a utility patent if the conditions of patentability are met. Similarly, the product itself or the design imprinted on a product may often be protected by copyright or design patent. This “belt and suspenders” approach often helps fight against brand erosion.
9. Be vigilant by looking out for newcomers to the market that may be using your intellectual property without authorization.
Enforce your rights if you find anyone conducting such unauthorized activities. Your failure to enforce your rights over time may provide the “bad guy” with a defense to an action for infringement.
10. Get professional help.
If you seek answers, retain counsel to look into your specific situation. This way you will get thoughtful consideration of your facts as they are applied to the relevant law. This brand protection info is generalized and exceptions may apply under your particular situation. These rules may change with time and also with jurisdiction.
Each case turns on its own facts. It is therefore important to seek advice from an experienced trademark attorney when choosing your brand name for trademark use. We appreciate new clients and will be happy to discuss your trademark strategy. See our article for more Tips for Naming Your Business, and contact us today!