Skip to main content

How to Make a Good Trade Name (So the USPTO Will Register It)

Posted by attorney Philip Marcus

For a couple years, in various forums, I have been annoying people about trade names one cannot get registered and /or that courts will not enforce against an infringer. I talked a good deal negatively about generic and descriptive trade names. What about something positive for a change? OK. Here it is now. There are two good ways to create a trade name that will pass muster. (This assumes there are no prior users of the same name.) One is to make up a word (a "fanciful" name). The other is to take a word or phrase wildly out of context (an "arbitrary" name). Let's start with some examples of fanciful names. Like Exxon, and Kodak. So for your name just try sticking syllables together until something pleases you. I have been told that syllables with Ks and Xs sound masculine, so keep that in mind. And make it pronounceable. Personally I like Zs and Qs, as in Zappos. They are memorable but not as harsh as K and X. The idea is the mind sticks on an unfamiliar sound or combination. Instead of processing it as part of a routine sentence parse, it treats the new 'word' as it would an unfamiliar aroma or taste or musical sound. If it is pleasant, maybe even if not, then people will want more of it. You can even use something actual from a foreign language not many people know, such as an eastern European or Asian language. How about using dobra roba, Slovenian for "great stuff?" Or Häagen Dazs, which is just made up but sounds like some fancy nordic language. (Everyone knows the nords live in a cold place so they must make good ice cream.) Then there is Etsy. To my knowledge this is also made up but works well for a crafts website. There is a company headquartered in Paris that owns brands like Gucci, Balenciaga and Puma, itself called PPR. Exciting name, isn't it? So they are changing. They are now to be called "Kering", which is pronounced "caring". It turns out Ker is Breton for home. (Breton is the language of Brittany in NW France.) This is a pretty cool name to sell in the English speaking world. It is very homey (caring), which women probably will like. Kering to me is a bit of a hybrid between a fanciful and arbitrary trade name. Those who know Breton will get the same message directly, but it avoids infringing the very many products and services already called "home". Will it go over in France or Germany? Who knows? But it will be registered. Let's talk about arbitrary trade names. This category to me applies to Amazon for a bookseller, or to Apple Computers. The words are real, but unconnected to the line of business. Another example known around Portland is Pink Martini. It has nothing to do with spirits or a saloon Instead it is the name of a multi-lingual musical group of eclectic taste. You can use your arbitrary word or combination of words either with or without an additional word or phrase that does describe your business. Apple Computers and Kodak Cameras are with descriptive words, while Pink Martini is without. Which to use is a question for a marketing or branding expert, not a left-brain lawyer like me. Finally, let's look at the trade-off from a descriptive trade name like Best Italian Style Pizza to Sing Pizza. Best Italian Style Pizza literally describes what the owner of the pizza joint thinks of his pizza. (By the way, if you are in the Portland area, I am always looking for real east coast pizza, so please let me know if you can refer me.) If you instead name your place Sing Pizza then you give up the literal description. You gain invoking the brain, especially the right-side brain, of whoever reads or hears the brand name. This produces images of a gondolier in Venice or a "fat lady" singing opera--how do you think she got that fat?--but boy did she enjoy herself. Sing Pizza is a stick-to-the-brain brand name people will associate with your business. And legally you gain the possibility (barring other issues) of getting a USPTO registration as an arbitrary brand name. As most people now know, the left part of the normal brain handles more of the logical and language functions, and the right side more of emotional processing and artistic matters. Actually, it is not quite that clear cut, as many nerve fibers link the two sides, and the left brain does some emotional processing. Still, whether or not the brain localizes function completely, one can still imagine it as having separate parts that handle primarily separate functions, and create to fit that model. Selling is mostly about reaching the right brain and its emotional processing, not about logic. Description, as in Best Italian Style Pizza, gets processed mostly by the left side. So the legal essential to make a brand name fanciful, or at least arbitrary, and avoid the descriptive is perfectly consistent with the marketing essential. Please keep that in mind when choosing a brand name. OK, get your creative juices going!

Additional resources provided by the author

The Trademark Manual of Examining Procedure or TMEP, found at 1209 (Refusal [to register] on basis of descriptiveness), especially 1209.01--Distinctiveness/Descriptiveness Continuum

Author of this guide:

Was this guide helpful?