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What's in a Name? - Trademark Considerations When Choosing a Business Name

Written by Kassandra Ramsey

· Trademarks,Trademark law,Business Law,Entrepreneurs

One of the most important things for a business owner to do is to choose a business name. Choosing the correct business name is essential to helping business owners create positive brand recognition that will resonate with their ideal customers. While choosing a business name can be both a very exciting and daunting decision, it certainly is one that should be given much aforethought. Business owners should seek not only to create a reputable brand, but should also strive to choose a name that will be protectable. Specifically, entrepreneurs should strive to choose a business name that will be able to be successfully registered with the United States Patent and Trademark Office (USPTO) and be afforded all protections that comes with the registration.

What Should Business Owners Consider When Choosing a Name?

The first thing to note is that not all names automatically qualify for federal trademark protection. The USPTO considers many factors when determining if a name should be granted federal trademark registration. For example, the USPTO will not grant federal trademark registration to marks that are immoral or deceptive nor ones that are confusingly similar to other federally registered trademarks of related goods or services. Secondly, the USPTO offers different protections for different marks. The USPTO has two different registers that afford federal trademark owners different levels of protection.

One register is the Principal Register, which affords federal trademark owners the most protections. The Principal Register provides several federal trademark protections including protections against counterfeiting. The second register is the Supplemental Register, which does not afford federal trademark owners with as many protections the Principal Register. However, having your trademark placed on the Supplemental Register does provides some benefits to the trademark owner. For example, it allows business owners to put everyone on notice that they have registered the mark with the USPTO by using the federally registered trademark symbol, the ®.

How Does the USPTO Determine Which Marks Appear on Which Register?

Once a federal trademark application has been submitted, the USPTO begins to evaluate whether the mark should be granted federal trademark registration. One of the first things that the USPTO considers in making this determination is whether the mark is distinctive. A mark is distinctive if it has the ability to identify or distinguish a mark from others. In determining whether a mark is distinctive, the USPTO determines where the mark falls on what is known as "the spectrum of distinctiveness."

What is the "Spectrum of Distinctiveness"?

The "Spectrum of Distinctiveness" consist of five categories. The first category pertains to marks that are considered fanciful or "coined." Marks that are considered fanciful or "coined" are those that are made-up words specifically for the business and/or brand it was created to promote. Examples of such marks include Kodak, Google, and Nike. Fanciful or "coined" marks are considered inherently distinctive. These marks are highly likely to be granted federal trademark registration and are highly likely to receive the full benefits of federal trademark registration.

The second category pertains to marks that are considered arbitrary. Arbitrary marks are those that have a common meaning but the meaning is unrelated to the respective trademark. An example of an arbitrary trademark is Apple for computers. These types of marks are typically considered distinctive and are highly likely to be granted federal trademark registration. They are likely to receive the full benefits of federal trademark registration.

The third category pertains to marks that are considered suggestive. Marks that are suggestive tend to indicate what the goods or service may do or provide. An example, of a suggestive trademark is Netflix as it suggests that the consumers will be able to watch movies via the internet. Suggestive marks may be granted a federal trademark registration; however, the mark may be afforded less protections.

The fourth category pertains to marks that are considered descriptive. Descriptive marks are those that describe a characteristic or quality of the goods or service. Examples of descriptive marks are creamy or cold. Such marks are generally not distinctive enough to be granted federal trademark registration. However, a descriptive mark may be granted federal trademark registration if the term acquires secondary meaning. The final category pertains to marks that are considered generic. A generic mark is one that is common and commonly used, such as cereal. Generic terms are not distinctive and are generally not granted federal trademark registration.

How do Business Owners Ensure They Choose a Protectable Name?

Business owners should work to make sure that they choose a name that is distinctive enough to garner to the most federal trademark protections. As such, business owners should strive to ensure that they have not chosen a business name that will pose a likelihood of confusion with similarly related businesses. Business owners should also consider the "spectrum of distinctiveness" when choosing a business name. Accordingly, the most effective way a business owner can ensure that they choose a protectable business name is to consult with a trademark attorney.

This article is intended to be informational and is not legal advice. For legal advice consult a licensed attorney in your jurisdiction.

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