A Rose By Any Other Name – Trademark Considerations

What is the best way to name a new brand?  That answer is different for everybody.  Sometimes a clever name comes easily to mind and is immediately accepted.  Other times, business owners know what they want their business to do and how they want the business to operate long before they can decide on what to name their brand.  No matter how you decide on your brand’s name, before you start an advertising campaign take a moment to reflect on the brand name you have chosen.  You should not only love your name as portraying the right image for your product, you should also ensure that the name will serve your company well as a legal trademark.  Because if you have a brand name that is protected as a strong trademark, you can not only generate sales, you can build value in your company and protect yourself from unfair competition.

1. Is My Brand Name Unique?

Before committing to a brand name, make sure that your name is not infringing on somebody else’s trademark rights.  The best way to do this is by performing a trademark search as early in the naming process as possible.  The results of the trademark search will not only help you determine the likelihood for possible trademark infringement, they will also give you an idea of the potential to expand your mark into different parts of the United States.  If you plan to grow your brand to become a national presence, you would generally want to use a trademark that you can obtain exclusive rights to throughout the country.  On the other hand, if your business lends itself to being confined within one state, you may not care that you cannot obtain trademark rights in states other than your own.  Ensuring that you have the right to use and expand a trademark before building a brand may seem obvious, but it is a step that is often overlooked in the excitement of starting a business and growing a brand.

2. Can I Prevent Others From Riding the Coattails of My Successful Branding Campaign?

Now that you have a name nobody has used before you, you must also ensure that nobody can start using the name after you.  By securing a national or state registration of your trademark, you can prevent others from lawfully using the mark.  But to secure a national registration, your mark must meet certain requirements.  One of these requirements is that the mark must be more than a description of the good or service with which it is associated.  So if you sell salted pretzels naming your brand SALTY would not provide you with very strong trademark protection.  But if you name your brand SQUEEZLE, or some other made-up word, you would likely be entitled to strong trademark protection.  Of course, there are some options in between descriptive and completely made-up words, but in general, the closer to the made-up word end of the spectrum your trademark lies, the more protectable it will be.

3. Will I Consistently Use This Brand Name to Identify the Source of My Product?

Regardless of the brand name that you select, you may maximize legal protection by making consistent use the name.  Every time you use the brand name, use it exactly the same.  If you write it in a special font, always use that font.  The more consistent your use of the trademark is, the greater your ability to protect your mark from infringement may be.

If you can select a trademark that meets all of these requirements, you will have taken a large first step along the path to creating a strong brand.



Kelly G. Swartz is an attorney and shareholder of Ingenuity Law in Melbourne, Florida.  Her law practice focuses on the area of intellectual property, including patents, trademarks, and copyrights.