By: Tessa Brandsema
For many nascent entrepreneurs caught up in the many layers of starting their business, building an intellectual property portfolio is not at the top of their priority list. In light of fundraising capital, navigating the real estate market for the ideal property, and building initial inventory, thinking about intellectual property filings might stay on the back burner. However common this scenario may be, it is a mistake—one of the most critical elements of any business is its name (and subsequent branding!), and ensuring that your preferred name is both available and enforceable should be a main prerogative.
What’s in a name?
When you think about the marketplace giants that we interact with every day—like Apple, Amazon, and Google—you will notice that their names are concise, unique, and recognizable. Entrepreneurs brainstorming a name for their product or business should try to emulate this blueprint, and not just because it is a smart marketing strategy, but because these names are likely to be more easily trademarked.
A trademark is a form of intellectual property protection used to protect a name, logo, slogan, or trade dress, and they are used to identify a source for a specific good or service. The goal of trademark registration is to protect consumers from confusion by source identifiers that are too similar or are likely to be confused by the average customer. This preserves the integrity behind a brand and prevents third parties from profiting off the goodwill and quality associated with another’s products or services.
For example, the United States Patent & Trademark Office (also known as the USPTO) is almost certain to refuse a trademark application for a search engine called Gaggle. This is a rather obvious attempt by the applicant to align themselves with Google’s search engine and be associated with the goodwill already stored in their brand, therefore drawing in customers who may think that their product is associated with Google. Furthermore, Google could be harmed by this likelihood of confusion if Gaggle puts out a poor product, causing consumers who believe the two companies to be related to hold Google in low regard due to the faulty new search engine.
On the other hand, trademarks that are identical but represent different goods and services are allowed to coexist on the federal register. Delta is a prime example of this: two large companies with the same name, but one is an airline, and the other makes appliances like kitchen sinks and faucets. The chance of a consumer mistaking the source of these goods or services for the other is incredibly low, and thus the two trademarks are permitted to coexist peacefully.
Performing Research
These nuances are important to keep in mind as an entrepreneur selecting a name for their new business. If you would like to explore what options might be taken already but have not yet retained an attorney to assist with your start-up, you can go to the USPTO website and use their Trademark Electronic Search System (TESS) to research what trademarks exist and may conflict with the one you have selected. After all, why get attached to a name and make plans based upon it, only to later find out that it is not a viable option for your business and need to start over unnecessarily?
Keeping in mind that the USPTO may issue refusals based on multiple grounds, including but not limited to identicality, likelihood of confusion, phonetic equivalents, and foreign language translations, it may be in your best interest to have an intellectual property attorney help with your search. Many law firms utilize special trademark search engines that are not accessible by the public, and these searches are much more sophisticated than the one available on the USPTO website. These comprehensive results can give you a better understanding of your name’s likelihood of success if you choose to file a trademark application. While some entrepreneurs may balk at yet another cost in the beginning stages, ensuring that your ideal company or product name is both available and protectable is invaluable down the road.
Policing & Prevention
Trademarks are not only useful because they allow the enforcement of rights in the event of an infringement but they can act as a deterrent before that even occurs. Think back to the preliminary searches mentioned just a few moments ago; if you found a conflicting preexisting mark, what would your course of action be? When a unique and protectable name is the goal, a business owner is more inclined to shift gears and turn to an alternative name that is more likely to afford their company an enforceable registration with the USPTO. The same is likely to be true for other parties searching the register and coming across your trademark—rather than continuing on with the name they originally selected, they will steer clear of anything too close to yours in an effort to avoid any confusion or potential litigation.
While common law trademark rights can be established just through use, obtaining a federal registration has many benefits for the owner. A federally registered trademark notifies the public that rights are reserved within the mark, acting as a deterrent for potential infringers who stumble across it, whether through a search of the USPTO website or by seeing your mark with the ® symbol next to it. Trademarks work hard to protect your brand by proactively discouraging infringement, making them a worthwhile investment for any entrepreneur. Starting a business is hard enough as it is—make sure your investments and branding are safeguarded by a trademark registration that can provide some peace of mind.
This post has been reproduced and updated with the author’s permission. It was originally authored on January 31, 2023 and can be found here.
Tessa Brandsema, at the time of this post, is a 2L at Penn State Dickinson Law. Tessa serves as an associate editor of Jus Gentium and the vice president of the Women’s Law Caucus. She is a former graduate from Millersville University, where she studied communication and media, political science, and international relations. Before law school, Tessa spent two years as an intellectual property paralegal.
Sources:
https://www.uspto.gov/trademarks/basics/what-trademark
Chad Jalandoni, How to Conduct a Proper Trademark Search, Gerben Intellectual Property, https://www.gerbenlaw.com/blog/how-to-conduct-a-proper-trademark-search/.
