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As a trademark attorney I often try to come up with good ways to explain the intricacies of the law to my clients. Whenever I work with a new trademark client we discuss ideas for naming their business and potential problems they might have in using a trademark and obtaining a registration. There are lots of things to consider when naming your business including the marketing, design, style, and legal aspects.
Also, I am currently expecting my first baby. As my husband and I consider different name options for the baby, we have had to look at each possible name from many different angles. Does it flow with our last name? Is there any significant meaning in the name? Do we both like it? How about the middle name? Should we consider family names? How does it sound in Spanish (my husband is from Honduras)? Our considerations go on and on. Everyday it seems like there is another thing to consider.
Picking a business name is a lot like picking a baby name. There are many different perspectives from which you have to evaluate the name. Business owners have to consider the marketing and design elements, their own personal feelings about the name and what they want to portray to consumers. Also, business owners have to consider whether their name is available for use and registration. You wouldn’t use your best friend’s baby name for your baby, you can’t use someone else’s trademark for your business.
Unlike naming your baby, naming your business without first clearing the name through a trademark attorney could result in serious legal, financial and business consequences. US Trademark law protects the rights of those who first use a trademark in commerce and obtain a trademark registration. A trademark lawyer can provide you with a clearance search, advice about trademarks, and help you file an application for trademark registration with the USPTO. We often help clients that have tried registering their mark with an online automated system.
Too often, clients come to us with trademark applications filed through automated services like trademarkengine.com or similar services. The price for such services looks too good to be true because it is. A trademark attorney with years of experience dealing with the Trademark Office can help you identify problems that you did not know existed. In most cases, it is important to identify these issues as soon as possible. Being forced to change your business name after a year in business is often a death sentence to a young company.
Unfortunately, we can’t help you name your baby but if you have any questions or want to schedule a consultation with a trademark attorney please Contact Us.
Choosing a business name without conducting a comprehensive trademark clearance search is one of the most common—and most costly—mistakes entrepreneurs make. Under Section 32 of the Lanham Act, 15 U.S.C. § 1114, a trademark owner can sue for infringement when another party uses a confusingly similar mark in commerce. You do not need a registered mark to have rights—common law trademark rights arise from actual use in commerce. A business operating under a similar name for years, even without federal registration, may have priority over your use in a given geographic area.
Many business owners believe that searching the USPTO database and finding no identical registered mark means they are safe. They are not. A proper trademark clearance search involves at least three layers: (1) the USPTO’s TESS database for federal registrations and pending applications; (2) state trademark registries in any state where you plan to operate; and (3) common law search engines, business name databases, and domain name registries to identify unregistered uses that still carry legal weight. A mark that is merely similar—not identical—to an existing mark can still be blocked by the USPTO under the likelihood of confusion standard and expose you to federal litigation.
The likelihood of confusion analysis under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), considers thirteen factors, with the similarity of the marks and the relatedness of the goods or services being the most significant. A name that sounds similar to an existing mark used in an adjacent industry may still be found confusingly similar if consumers would reasonably expect both businesses to be related. This is why clearance requires expert legal judgment, not just a database search.
Not all names are equally protectable. The USPTO places marks on a spectrum from generic (completely unprotectable) to fanciful (the strongest and easiest to register). A name that describes what your business does—”Fast Delivery Service” or “Quality Plumbing”—will face significant obstacles under Section 2(e)(1) of the Lanham Act, which bars registration of merely descriptive marks unless they have acquired secondary meaning through years of use. Coined or invented names like XEROX, KODAK, or HÄAGEN-DAZS are the strongest because they have no meaning other than as brand identifiers.
For most businesses, the practical sweet spot is an arbitrary or suggestive mark. Arbitrary marks are real words applied to unrelated goods—APPLE for computers, AMAZON for retail. Suggestive marks hint at a quality without describing it directly—NETFLIX suggests streaming but does not describe it. Both categories are inherently registrable without proof of secondary meaning and provide broad protection.
Consider what happens when a business invests a year—or five years—building brand recognition around a name that infringes someone else’s mark. You face a cease-and-desist letter, a potential federal lawsuit seeking injunctive relief and damages, and the catastrophic need to rebrand. Rebranding a mature business means new signage, new marketing materials, a new domain, new social media handles, customer confusion, and SEO erosion. The cost of rebranding routinely runs into the tens or hundreds of thousands of dollars even for a small business.
Compare that to the cost of a proper trademark clearance search and a federal trademark application—a fraction of a rebranding exercise. The USPTO filing fee for a trademark application is currently $250–$350 per class of goods or services under the TEAS Plus or TEAS Standard processes. Attorney fees for thorough clearance and application preparation are modest relative to the risk being eliminated.
Automated services process your application mechanically. They do not analyze the likelihood of confusion between your mark and existing marks. They do not advise you on how to describe your goods and services to maximize protection while minimizing rejection risk. They do not respond substantively to Office Actions—the USPTO’s written refusals—which require legal arguments grounded in trademark doctrine. And they will not tell you that the name you have fallen in love with is legally vulnerable before you have committed significant resources to it.
The right time to involve a trademark attorney is before you name your business, not after you receive a cease-and-desist letter. Contact the trademark attorneys at Revision Legal to discuss your naming strategy and get your clearance search done right. Reach out today.
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