Startups inevitably face the difficult task of coming up with a name for their company. Among the many things you need to consider during the process is trademark law. Why? Simply put, certain names can get trademark protection, while others can’t. Understanding the rules for getting trademark protection will save you a lot of time and possibly a lot of headache.
By way of background, a trademark is something, such as a word, phrase, or logo that identifies your brand to consumers. Trademark law exists for one reason: to prevent consumers from being confused. For example, I couldn’t open up a shoe store and call it “NIKEY” (note the extra “y”), and all of a sudden claim I’m different from the popular NIKE shoes. A consumer would be confused as to whether my NIKEY shoes were someone manufactured, affiliated or endorsed by NIKE.
The following is a brief guide to the types of marks that exist and which ones may or may not be protected:
- Generic marks – Imagine you are selling pizza, and you call your pizza shop “PIZZA.” Clearly, you could not get a trademark on the word PIZZA, and prevent others from using the word pizza when selling their pizzas. Generic marks can never receive trademark protection.
- Descriptive marks – Imagine now that you call your pizza shop “CHEESY.” The default rule is that you cannot prevent others from using the word “cheesy” when selling pizzas – after all, your competitors need to use the word cheesy to describe what they’re selling. There’s an exception to this default rule, though it doesn’t come up as often.
- Suggestive marks – Think of “MUSTANG” for cars. A mustang is strong and fast, and similarly, Ford wants you to think that their cars are strong and fast. Note that unlike descriptive marks, suggestive marks have some type of imaginative leap between the mark and the goods being described. Suggestive marks can receive trademark protection.
- Arbitrary marks – Think of “APPLE” for computers. No inherent relationship between an apple and a computer exists. Arbitrary marks can receive trademark protection.
- Fanciful marks – A fanciful mark is a made up word, such as “XEROX.” A fanciful mark can receive trademark protection.
- Rules on names – First and last names together can be trademarked (for example, Sarah Palin has trademarked “Sarah Palin” in relation to giving political speeches). However, a last name alone usually will not be able to be trademarked.
You automatically acquire trademark rights by virtue of using a mark. So a business that operates under a particular name in Akron has trademark rights in Akron, without having filed any paperwork with the government. However, if a startup wants protection in multiple states for its name, they may want to pursue a federal trademark registration. If a business has successfully obtained federal trademark registration, it can use (R) in conjunction with its mark. If a business has not yet obtained federal trademark protection, but nonetheless wants to signal to the world that it views a particular mark as its trademark, it can use TM for goods or SM (service mark) for services.
If you choose to pursue a registration of your trademark, consult an attorney qualified in the process. There are many legal tests that need to be passed in order to receive federal trademark registration and using counsel that is familiar with the registration will be worth the investment.
The following in no way constitutes legal advice, and should not be construed as such. Rather, it is a general summary that you should not rely upon. For information specific to your situation, consult an attorney.