Can My Business Name Be Trademarked?

This is a question that I get asked a lot; I’m happiest when we are asked before the name is “launched”, so that the business owner can assess the amount of trademark protection that is available when deciding whether to adopt a particular trade name.

“Can My Business Name Be Trademarked?” is a question that is best unpacked into several other questions:

(1) Do I have any trademark protection in this name at all? If so, how strong of a mark is it?
(2) Can this name be registered with the United States Patent and Trademark Office?
(3) What other risks might be associated with adopting this business name?

I will address these each in turn.

(1) Do I have any trademark protection in this name at all? If so, how strong of a mark is it?

The strength of trademarks is graded on the following scale of distinctiveness,1 from no protection to the strongest protection :

  • A generic term. A mark that has been found to be generic can be used by anyone and can never be registered. These are used by the consuming public to refer to (or some would limit it to “naming”) common goods, and can never become a registered trademark. Examples are “Quick Notary” or “Delicious Tea”, or for more borderline cases (adjacent to descriptiveness), “Mechanically Floor-Malted” for whisky or “Zero” for a diet soda.
  • A descriptive term. A descriptive term is one that describes the goods, but isn’t fully generic: “Home Brewing Co.” for beer, or “Best Protein” for nutritional supplements. A name that just describes the geographical origin of a product is also merely descriptive. Descriptive terms can eventually become registered trademarks if the owner can show that the public has learned to associate the name with the owner’s goods and services; after five years of continuous use, this becomes easier.
  • A suggestive mark.  These are marks that have some suggestion of the type of product, but are not a direct description of it. Examples are Microsoft, Rite Aid, or Staples. This is the minimum threshold for federal registration, absent a showing that the name has “acquired distinctiveness” with the public. 
  • An arbitrary mark.  This takes a normal word and applies it to a product where there is no apparent association, such as Apple for computers, Delta for airplanes,  BlackRock for investments, or Amazon for internet retail.
  • A fanciful mark.  Fanciful marks are made up words that do not suggest the product or service and don’t appear in any dictionary.  Many Toyota cars (Celica, Tercel, Camry) most prescription drugs (Zantac, Prilosec, Lipitor), and many technology companies (Zynga, Etsy) are examples of fanciful marks.

For business owners adopting a new mark, the stronger the mark that you choose, the better.  This is because a new business owner typically has neither of the advantages of the example above: the mark is new, and the business does not have enough profits yet to pay attorneys to litigate a dispute.  In addition, picking a fanciful name makes it easier to conduct a search to ensure that there are no other owners of the mark that might consider it to be confusing. A suggestive mark is the minimum for federal registration. 

(2) Can this name be registered with the United States Patent and Trademark Office?

Generally speaking, if a name is suggestive or better on the distinctiveness scale, and there are no other registered marks for similar goods or services2 that have a “likelihood of confusion” with the mark, then it can be registered with the USPTO.  Registration provides benefits in the event of litigation, but it also tends to deter litigation in the first place, because other businesses looking at potential marks will search the USPTO database first before adopting a name; and if you find another party that starts using the name after you, the registration can be helpful in dissuading them from continuing to use the mark.

The first step in determining the answer to this question is searching for similar live marks in the USPTO database.  It is also a good idea to search for similar spelling or any minor variations that seem likely. If you want to try to do this search yourself, you might see my post “How To Do An Effective Trademark Search with the USPTO Website“, although of course any such guide is not a guarantee in finding potentially conflicting marks.

(3) What other risks might be associated with adopting this business name?

Although not strictly necessary for the application for registration, it is also a good idea to search on the internet for the term to see how it is being used, and if there are any other parties that are using it for the same type of goods or services who may not have registered the name with the USPTO. Even if you are the first to file for and receive a registration for the trademark, a party that started using it earlier may have superior rights in the name depending on when and how they choose to contest your mark.

It seems like almost every string of letters has been turned into some kind of brand name or another.  In assessing a potentially competing name, two practical factors to consider are: (a) how similar the competing mark is to yours; and (b) the financial resources and overall “seriousness” of the party that is using it. If a Fortune 500 company has a new product line with the same name that you are considering, I’d strongly suggest looking for another name.  If you find a blog using the name and there are only four posts and last one was in 2009, then while there are some theoretical risks, they are probably fairly small.  There are also many other possible scenarios that lie in between those two examples; if you are not sure about whether it is a good idea to proceed with a particular brand name, then it may be a good idea to consult with a trademark attorney.

  1. Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976).  

  2. Marks for dissimilar goods and services do not infringe on each other.  For example, Delta Airlines and Delta Faucets both have the same mark, but they would have no trademark cause of action against each other because no one confuses a sink faucet for an airplane. 

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