Building A Strong Trademark For Your New Business

Katherine Eppley, Esq., University of Akron School of Law

You have a great idea for a new business–  You’ve prepared your business plan and created a product prototype, so what more do you need (besides a coveted spot on Shark Tank)?  You need to name your business of course! This article serves as a brief introduction to building a legally protectable name for your new business that is also memorable and engaging to consumers.

Step 1: Get Creative (With a Little Help From Your Friends)

To name your new business, it is important to analyze how that name will contribute to your present or future brand strategy. Your business name is the first thing a consumer encounters when introduced to your business and the last thing you want them to forget. The recipe for the “secret sauce” of hooking consumers with your name is to make it (1) unique from competitors, (2) memorable or catchy, and (3) engaging or evocative. Your business name will resonate with customers if it is one of a kind, easy to remember and if it engages them or evokes emotion.  For example, if I create a new exterminator business and name it “Bugs Be Gone”, I can immediately capture my audience’s attention using humor and alliteration, as well as simple words that are easy to remember.

If the name of your business is too literal, i.e. it simply describes the goods or services you provide and/or includes only your surname (“Atlanta Exterminators” or “Smith Exterminators”), it will go in one ear and right out the other for prospective customers. In other words, a new customer will more likely have difficulty remembering your name if the name is generic or simply boring. Additionally, a way-too-literal business name may actually redirect your customers right into the arms of your competitors. Go ahead, Google “Atlanta Exterminators” and see how many existing exterminators are out there ready to accept your business! Having too literal of a business name can also box you in long-term, preventing you from smoothly transitioning your business to include anything other than what your literal name defines. For example, my imaginary business named “Atlanta Exterminators” could have trouble expanding its services to include a new service such as lawn care, or a new location, such as Cleveland.

As such, making your name unique, memorable, and engaging will save and make you money in the end. Unsure how to get started? Great business leaders rarely create a successful business alone, and that includes creating a name. Enroll your team or a group of friends to brainstorm together. Share your ideas and don’t be afraid to get messy. Starting might seem like the hardest part, but simply sit down, grab a pencil and make a list of words or phrases associated with your business. Let your creative juices flow from there! Here are a few tools you can use to make your business name unique, memorable, and engaging:

1. Alliteration – Coca Cola, Bed, Bath & Beyond
2. Play on Words – Beano, Which Wich
3. Rhyming – 7 Eleven, Piggly Wiggly
4. Word Mash – Wikipedia, AirBnB
5. Misspelling – Froot Loops, Krispy Kreme
6. Drop/Add a Letter – Flickr, Tumblr, Digg
7. Make Up a Word – Kodak, Etsy
8. Go Greek – Nike, Pandora

Step 2: Do Your Homework

Once you have your lengthy list of potential names for your new business, you must perform your due diligence, primarily to avoid infringing others’ existing trademarks (and a massive headache down the road).  With respect to my “Bugs Be Gone” example above, if I had done my homework before naming my business, I’d find that the name is already taken!  By conducting searches on the U.S.P.T.O. trademark database (“TESS”) and other internet search engines, you can uncover existing entities that are already laying claim to your prospective business name. To prevent missing any critical information, you should search using alternative phonetic spellings of your business name and search utilizing multiple databases. In addition, be sure to determine the availability of prospective domain names.  It is also worth noting that finding a similar or the same name for another business does not necessarily preclude you from also using that name.  Whether you can also use that trademark comes down to whether your goods/services are also similar or the same. For example, I may be able to open a horseback riding business called “Apple”, but I would not be able to use the name “Apple” for any business related to computers or technology.

After you begin using your mark in commerce (or once you have registered the mark with a bona fide intent to subsequently use the mark in commerce), you must continue to monitor the marketplace for similarly named competitors. Best practice if you find a potential infringer of your trademark rights is to contact them as soon as possible and assert your rights.  This can help to avoid any legal consequences such as losing your enforcement rights, for example due to genericide, i.e. allowing your mark to become the generic name for that type of product. (Think: Zipper or Aspirin).

You may choose to register your business name as a trademark with the U.S. Patent & Trademark Office.  According to U.S. Trademark Law, your mark will likely be rejected (1) if the mark is confusingly similar to other marks already registered or pending registration; (2) if the mark is deceptive as to what the goods or services actually are or where they are from; or (3) if the mark is merely descriptive of the goods or services. Although registration is not required to have trademark protection for your new business name, there are advantages to registering your mark, such as the ability to file a federal trademark infringement lawsuit.  Whether you elect registration or not, these foundational trademark principles will help you select a business name that is legally protectable and strong under trademark law.