Legal Checklist For Choosing A Business Name

What should you think about when choosing a brand name? This isn’t necessarily a definitive list, but it is a three things to consider from a legal perspective. Actually it’s really two things: understanding the legal/marketing compromise of the mark strength, and then searching (both the internet and at the USPTO).

1) Consider the strength of the mark. There is a well-defined continuum of names, from weakest to strongest:

  • Generic, a term everyone uses for the thing (“Fast Car”). This is not a good choice, usually.
  • Descriptive, describes what the goods do (Ford “Transit” — that’s borderline generic, but the USPTO let it register after an initial generic-ness rejection)
  • Suggestive, suggests possible uses or experiences associated with the goods or services (Ford “Explorer”)
  • Arbitrary, a normal word that would not normally be connected with the goods or services (Ford “Fiesta”)
  • Fanciful, a word that is completely made up (Toyota “Celica”)

Anything that is stronger than “generic” can be registered, but the further down that scale the more assured you can be that no one will mess with you. That’s for two reasons:

Pilot With Plane-Parking Checklist, cc-by, curimedia.

Pilot With Plane-Parking Checklist, cc-by license from Curimedia.

(a) practical reasons, because searching for a coined term is easiest to determine if anyone is using it already (for example, I can say that “flumboora” is a very safe mark since I just googled it and there were zero hits), and searching for an arbitrary term in the particular goods and services class usually results in few hits if any.

(b) legal reasons, because most legal systems use some version of this continuum and deem the stronger marks to have greater legal protection, on the rationale that any association between the word and the goods and services in the minds of consumers is due to the producer, and not because of any inherent language-based association.

There’s nothing wrong with a descriptive mark, but you should at least be aware of the tradeoffs that occur with these different types of marks. Descriptive or suggestive marks can give an extra initial marketing boost due to their explicit or implicit association with the goods or services, but those types of marks are more likely to run into conflicts (someone else thought of it first), more work to ensure there are no competing marks, may have a higher likelihood of running into a dispute about consumer confusion, and might be a bit weaker if there was a dispute.

Fanciful marks require some consumer education (“What does ‘Flumboora’ mean? What does Flumboora, Inc., do?”) but once the consumers know what your fanciful name means, they won’t confuse it with anything else, the likelihood of problems with trademark owners is lower, and if there are problems, you are more likely to come out on top (assuming you were using it first).

2) Check whether anyone is using the mark. Search for it on Google, perhaps also tacking on words for your goods and services if the mark is not fanciful. Look at who is using it, and whether their goods and services are similar to yours. Go through (at least) several pages of results.

3) Check in the USPTO database. Check at Start with a basic search just for the word, or for similar spellings to your potential mark. If you have a suggestive or descriptive mark, limit it by international class and only live marks. Let’s say you searched for “Fiesta”. The search results will have a little “refine results” search box that says ” (fiesta)[COMB]”. That means it is searching the combined database (marks and translations of marks). That results in 1141 records — if I’m planning on launching a car, though, I don’t care about all the party-supply businesses and whatnot. So I figure out that international class 12 is for automobiles[1], and then add that to the search to make it “(fiesta)[COMB] AND (012)[IC]”. Down to ten records. You can also filter out the “dead” files from the search and only view “live” marks that are either in the application process, or already registered:  “(live)[LD]  AND  (fiesta)[COMB] AND (012)[IC]”. Four records left — one for Ford, two for Schwinn bicycles, and one for a motor home company.

These are all the types of things that you would also expect an attorney to help you with when filing a trademark application, but I wanted to put these up as a blog post since many business owners want to be able to brainstorm and check potential names as they go, rather than having to check in with the attorney for each one.


[1] Although you can look through the full listing of international classes here, or just search for an arbitrary mark from a big, reputable company (who would have hired expensive lawyers that would have gotten the category right) in the same category as your new potential brand, and see what class it is in.

See also the related posts on “Can My Business Name Be Trademarked?” and on my fees for trademark applications. Ready to talk to an attorney about registering your trademark? Contact me!

Checklist graphic by Mufidah Kassalias, licensed cc-by-nd.

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