How can set yourself and your business up for success? It all starts with the name, and I will provide you with four key takeaways that can help.
- Pick a name that is unique from others in the space
- Pick a name that is not descriptive of your goods and services
- Secure rights in the art/logo via assignment
- Work with an attorney to file trademark applications in countries where you intend to use the mark.
I remember when the graphic designer I hired came up with the initial logo for our law firm. Seeing it on mockups for a website and for business cards was a surreal experience. It reduced the months of planning and research into something tangible and real. It hit me so quickly—this is really happening—and I was filled with pride in what was to come.
I know many entrepreneurs feel this same sense of excitement when engaging with initial branding and logos. One entrepreneur told me he would rather change the name of his first-born child than his company. While some are very pragmatic in choosing business name and logos, most of us are so excited to get moving that we can miss the forest through the trees and create unforeseen problems down the road. Because choosing a name and logo is an integral part of your company’s identity, it is important to set yourself up for success. It is the embodiment of the classic saying, “a stitch in time saves nine.” Here are four tips to consider when choosing your name and logo to make sure you are starting on the road to success.
1. Prior Use?
This is the most basic—and, if not completed, often tragic—of the tips. Prior to deciding on a name and investing time and money into branding, you should absolutely determine if others operating in the space are using your name or something confusingly similar to it. Google search your list of potential names to ensure no one else is using them. While a Google search is certainly not exhaustive, it is a great start to mitigating the potential for problems down the road.
You can also use the Patent and Trademark Office’s Trademark Electronic Search System (TESS) to see what trademark applications and registrations may be at the Patent and Trademark Office (PTO). Note, TESS is highly nuanced, so while you can likely perform a basic search competently, we recommend a more robust search conducted by a trademark attorney prior to filing a trademark application. This will help to eliminate issues with your application and name down the road.
When you are contemplating your initial searches, it is important to understand that trademark rights are made to prevent consumer confusion. This means that:
- Rights are limited in scope of goods and services; and
- Small derivations will not prevent a finding of infringement.
In relation to item (i) above, a consumer is not likely to confuse McDonald’s Burgers with McDonald’s Hardware; however, if someone started selling McDonald’s Tacos, this likely would constitute infringement as the goods are closely related. Do not view this too liberally when conducting your search or choosing a name—the similarity need not be as close as tacos and hamburgers to constitute a likelihood of consumer confusion. The analysis is highly subjective so if the names are similar and the goods are similar, do not talk yourself into differentiation—consider a different name.
In relation to item (ii) above, a small derivation from a prior name will not prevent consumer confusion. Nike shoes will be confusingly similar with Nyke shoes. Pickle juice will be confusingly similar with pickle juze. You would be astonished at how often I get asked these sorts of questions.
Do your best to find something truly unique. It will prevent potentially expensive conflict further down the road and will also provide your company with its own unique identity.
Not all trademarks are created equal. There is a spectrum of distinctiveness. The most distinctive marks, which are fanciful or arbitrary, are afforded greater protection while less distinctive marks, which are descriptive or generic, may be afforded little or no protection.