Land My Brand - How to Lock in Your World Changing Brand Name Without Getting Sued
This guide will show you: (1) how to choose a brand name that is strong and can be legally protected by registering as a trademark; and (2) how to make sure your brand name is legally permitted to use with a step-by-step guide.
Step 1 - Choose a Strong Brand NameThere are many factors that go into deciding on a brand name. Making sure the name reflects your brand clearly and concisely is one of the factors. Another is ensuring you not only have the right to use that name, but that if you decide to trademark it, you will have the ability to do so. A “trademark” is a word, name, symbol, or device used to identify goods and distinguish them from others. 15 U.S.C. Section 1127.
To ensure you have the strongest chance of being protected from “copycats” stealing your brand and being able to register your name as a trademark, having, consider the hierarchy of below (weakest to strongest) in picking your name:
1. Generic. A generic trademark is really not a trademark at all. Using the term “banana” to describe a “banana”, for example, is not subject to trademark protection. Thus, when choosing a trademark, it is improper to choose a name that is defined in a dictionary to mean the type of product on which the trademark is being used.
2. Descriptive. Descriptive marks are also poor candidates for strong trademark protection. A mark is descriptive if it describes what the product is. For example, if the product is a drawer that goes in a desk, the trademark “desk drawer” would be considered descriptive since it merely describes what is being sold.
3. Suggestive. Suggestive marks are stronger trademarks, especially if they hint at the type of the product without actually revealing what the product is. For example, the trademark “Chicken of the Sea” which suggests an image of the type of product but does not indicate what the product is that is actually being offered.
4. Arbitrary. Arbitrary trademarks are the best choice from a legal protection viewpoint. These are words that have absolutely no meaning prior to their adoption. These marks instantly become identified with the particular brand, and the exclusive right to use the mark is easily asserted against potential infringers. An example of an arbitrary trademark is the trademark “Nike®”.
For legal protection and for the best chance a name is not already taken, choose a brand name that is arbitrary.
Step 2 - Google & Domain SearchMost business owners think the only place that needs to be search for brand name availability is the United States Patent and Trademark Office’s (“USPTO”). This is a huge mistake. To do a thorough search, you need to read through databases, news, business and public records, legal and financial records, and the USPTO.
In the US, trademark/legal rights to use a brand name/mark, result from use, and not registration with the USPTO. The first business to use a name/mark for commercial purposes and on an ongoing basis owns common law rights to it.
Therefore, I like to start my search with sources besides the USPTO first. The first step is to simply Google your brand name/mark. If your Google search reveals an exact match or similar match (this includes domain names as well), you may not be able to use your brand name. See below for searching variations.
Step 3 - Secretary of State SearchThe next step is to search the Secretary of State’s website in any State you plan to use your brand name or sell your products/services. A person may register for a trademark at the State level if they want to be protected to use a certain name in a specific State. If your State search reveals an exact match or similar match, you may not be able to use your brand name in that particular State. See below for searching variations.
Step 4 - USPTO SearchAfter doing preliminary Google and Secretary of State searches, the next step is to search on the USPTO Trademark Electronic Search System (“TESS”) database.
A. Likelihood of Confusion
When doing a search for a brand name to make sure it is clear to use, the standard in choosing a mark is “likelihood of confusion”. A “likelihood of confusion” exists when (i) the names/marks of the parties are similar; and (ii) the goods and services of the parties are related in such a way that consumers are likely to believe they come from the same source. That is, the marks look alike, sound alike, have similar meanings, or create similar overall commercial impressions and the goods and services are identical or are related in such a way that consumers would be likely to assume that only one company provides all of the goods and services when, in fact, the goods and services come from more than one source.
Remember, when searching for names think…same or similar mark; related goods and services.
When searching the USPTO, I like to search as broad as possible and then narrow my search if needed. Perform the following search methods in order.
B. Search the Exact Word or Phrase
Try the obvious first and enter the mark as it exactly appears (business name, phrase, etc.). Start at the USPTO homepage, go to “Find it Fast”, “Trademarks”, and click on “TESS - Search Trademark Database". Select “Word and/or Design Mark Search (Free Form)”.
In the “Search Term” box, enter your exact word or phrase with quotes and click “Submit Query”. See if you get a hit right away. If you do, examine each record.
If you don’t get any hits with quotations, search your word or phrase without them. You may get thousands of hits.
If the exact phrase shows up in a search as a registered active trademark, you will not be able to use that brand name (unless you were the first one to use the mark in commerce). If the search produces several results or does not produce any results, you should continue your search as detailed below. The idea is to get your results list to a manageable number (below 150).
C. Search for Variations of the Name
Here is where the real money is made. Think of all of the possible variations of your brand name (and each word of the phrase).
1. Look for obvious misspellings: “Thanks” vs. “Thx”, for example.
2. Check for vowel substitutions: “oo” for “long-u”, and so on.
3. Check for consonant substitutions “ks” for “x”, “c” or “z” for “s”, “k” for “c”.
4. Look for word/number substitutions: “two” for “2”.
5. Don’t forget plurals. The free form search page has a “plurals” box - change it to “yes” to search for obvious grammatical plurals.
Use Truncation Characters. It may be impossible to think of all of the possible variations so the USPTO helps you out with the use of truncation characters (*, $, $n, and ?). You can use truncation characters in your search to represent one or more optional characters.
Step 5 - Narrow Your SearchIf you get through the above search methods and your search provides too many hits, next try narrowing down the fields.
Use Field Codes
Use the [BI] field code when searching for words in a mark - this covers the word mark, translation and “pseudo mark” fields. Pseudo marks are translations, correct spellings of deliberate misspellings, spelled-out abbreviations, and so on. Without the [B1] field code, your search could appear in an owner’s name, attorney’s name, etc.
A helpful hint when you are using the [BI] code to search is to use * to replace any number of letters. Try each part of the name separately and in combination: Soap*[BI] and *Basket [BI]. Prefix and postfix truncation searches can be very useful.
Look for Related Goods & Services
Narrow your search to marks for goods and services which might be competitive with yours. Remember: same or similar mark; related goods and services. Perform a search in the USPTO's Trademark ID Manual (“ID Manual”) to find goods and services that are classified like yours.
Open the ID Manual. In the search bar, type the name of one of your goods or services and hit enter. Your results will list every description in the ID Manual that includes the term you entered. Look at the description column for a description that accurately reflects your good or service. If you find one, look at the class column for the class number of your good or service. If you hover over the class number with your cursor, you’ll see an explanation of the type of goods or services in that class.
Your results may show descriptions that appear to be duplicates. Sometimes, similar goods are listed in multiple classes. These goods are classified based on their purpose, their composition, or some other factor. Repeat this process for the other goods or services you offer to get a sense of how each one is classified.
Identify the classes of related goods and services. After you’ve looked up the goods and services you provide, repeat the process for goods and services that are related to yours. If you’re not sure what those are, here are a few questions to help you get started:
1. When a consumer knows what goods and services you offer, what other goods and services might they reasonably expect you to offer?
2. What goods or services do your competitors provide that you don’t?
3. In a department store, what products might be displayed in the same aisle as yours?
4. What other products are commonly used with yours?
To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source. The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.
My preferred search field for related goods and services is [CC] “Coordinated Class”. The USPTO has compiled a list of goods and services from different classes that are so related that they are called coordinated classes.
Step 6 - Review Your Search ResultsFocus on these details:
1. The mark at the top of the page - Is the mark similar (in sound, appearance, meaning, or commercial impression) to yours?
2. Word mark - Is the wording similar to the wording in your mark?
3. Goods and services - Are the goods and services similar or related to your goods and services?
4. Live/dead - Is the mark live?
If you answered “yes” to these questions, there may be a likelihood of confusion between your brand name and the name you are reviewing. You may not be able to use your name.
In building your business and reputation, your brand is everything. This connects your customers to you and creates loyalty and ultimately more sales.
Before choosing a name make sure you do a thorough search. There is no way of getting around the fact that there are a lot of steps involved in performing the necessary search. But I believe if you take the time (only 30 minutes to an hour) to go through these steps, you can avoid wasting months of your time and thousands of dollars marketing a brand name you will not be able to use.
Sure, this can take more time up front than you initially intended, but I guarantee that you will not be disappointed!