September 7th, 2016

Naming Your New Business is Never an Easy Task

How long did it take you to come up with a name for your startup? Are you an Entrepreneuer trying to think of the next great company brand name? Here’s a look at the process of choosing a name for your company and some examples of ones that have thrived and others that haven’t been so lucky.

By Susanne Somersalo

Choosing a brand name can be challenging, because it’s something you really want to get perfect. You want to have a name that is unique and can be easily remembered. Perhaps it’s something that has a connection to your service or the product. Maybe it relates to your name or a geographical location. Then there’s still the matter of what else goes into your brand, like colors, logos, fonts, etc.

When you choose your brand name, it is essential that you have someone do a trademark search for you. No one wants to invest money and effort to market a company name, print materials, and create a website, only to later receive a hostile sounding cease-and-desist letter from a company that claims that your brand name infringes their rights.

Once you have a search done and know that there are no trademark applications or registrations for anything that resembles your chosen brand name, you probably should consider protecting your name by filing a Federal Trademark. It is a relatively affordable process and it will protect your brand name and the goodwill of your mark against anyone who may try to use something similar.

For the purpose of registering the name as a trademark, you should also remember that a generic name cannot be registered. For example, one can not get registration for the word “bread” in connection with a product that is bread.

A trademark has to be capable of distinguishing the product or the services. The trademarks can be divided into four categories based on their distinctiveness: fanciful, arbitrary, suggestive and descriptive.

The strongest marks are fanciful marks, which do not indicate what the product is. Examples of fanciful marks are Kodak® and Pepsi®. Arbitrary marks are marks such as Apple® in connection with computers. (Apple is an existing English word but it has nothing to do with computers as such.)

Suggestive marks are from the weaker end of the chain. These are marks that have some kind of connotation that suggests the product, but the name does not describe the product. Examples of suggestive marks are such as L’eggs® for pantyhose or Glass Doctor® for window repair.

The weakest kind of trademark is a merely descriptive mark. Actually a merely descriptive mark cannot be registered unless it has gained a secondary meaning. A descriptive mark describes the product or service in a way that the consumer does not need to use their imagination. For example, Kentucky Fried Chicken® is a descriptive mark—it merely describes the product. However, Kentucky Fried Chicken® is a strong trademark today, because the owner has made sure the mark is always visible in connection with the services, and has not allowed others to use confusingly similar marks. The mark has thus gained a secondary meaning: when a consumer hears the name “Kentucky Fried Chicken” he or she immediately recognizes the brand name and knows what kind of product is involved. We know that it is not just some fried chicken joint in the state of Kentucky.

If your brand name is descriptive, you still can get it registered through the Supplemental Register. Supplemental registration gives you a right to use ® in connection with your mark and it would give you a right to sue infringes in the Federal Court. After you have used your mark for five consecutive years you can apply to get the registration into Principal Register based on an assumption that five years of continuous use gave the originally descriptive mark a secondary meaning.

Once you have your brand name registered, you need to make sure you use it properly. You should use ® with your brand name to make sure public knows it is a trademark. You should also monitor that no one is using anything confusingly similar to your mark. If you fail to take these steps your mark may become generic and lose the right to be registered. This has happened before to brand names such as cellophane, aspirin, escalator, kerosene, zipper. All these names were ones with viable trademarks, but the owners failed to use them properly and they became generic names.


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