Choosing a business name that can be trademarked

[FlyingSquirrel7]

What is the name of your state (only U.S. law)? Washington

I have a business idea and I am about to start up a website, blog, social media etc and begin building a brand. So, I'm trying to pick a business name / brand name that can be trademarked, because I don't want to do all of this work and then deal with issues later (been there, done that already, with another business idea in a separate industry, and learned after over a year that the name could not be protected legally)

I have always found this difficult to understand. The biggest trap seems to be choosing something which is merely descriptive, as it cannot be protected by trademark (at least that's my understanding of it). But it's very hard to understand what exactly "descriptive" is...where does one cross the threshold from descriptive to unique? Can combinations of nouns be unique?

I have a brand name / company name idea already in mind that I like a lot. An example of something I found online which has a similar naming structure, but is in a different industry, is "The Cake Den." My idea would replace "Cake" with the appropriate noun in my own niche. Do you think that would be able to be trademarked and legally protected? Or is it still just descriptive and not unique?

What are your thoughts on that idea and on the topic in general?

Also, any tips for choosing a business name in this day and age, when it seems just about every idea is already taken or being used?

Thank you very much

 

[quincy]

What is the name of your state (only U.S. law)? Washington

I have a business idea and I am about to start up a website, blog, social media etc and begin building a brand. So, I'm trying to pick a business name / brand name that can be trademarked, because I don't want to do all of this work and then deal with issues later (been there, done that already, with another business idea in a separate industry, and learned after over a year that the name could not be protected legally)

Once a name is used as an identifier in commerce for business goods or services, it is a trademark and rights to the name can be protected under trademark laws, assuming the name chosen to identify the goods/services does not infringe on the rights of another.

In the US, a trademark can be federally registered, and registration comes with benefits, but registration is not necessary to gain rights in a name or enforce these rights.

I have always found this difficult to understand. The biggest trap seems to be choosing something which is merely descriptive, as it cannot be protected by trademark (at least that's my understanding of it). But it's very hard to understand what exactly "descriptive" is...where does one cross the threshold from descriptive to unique? Can combinations of nouns be unique?

Once a name becomes connected in consumers' minds with a specific product or service (gains a secondary meaning), it can be protected under trademark laws. Descriptive marks - those that describe a product or service - are considered "weak" marks because they do not adequately distinguish the goods/services from all others in the marketplace. And yet, over time and with good marketing, even descriptive marks can gain the necessary recognition from consumers to provide these marks with protection. Kentucky Fried Chicken and Speedy Printing are both descriptive marks with federal trademark protection.

I have a brand name / company name idea already in mind that I like a lot. An example of something I found online which has a similar naming structure, but is in a different industry, is "The Cake Den." My idea would replace "Cake" with the appropriate noun in my own niche. Do you think that would be able to be trademarked and legally protected? Or is it still just descriptive and not unique?

Again, unless a name infringes on the rights of another - causes consumers confusion over the origin of the goods/services - it can be used as a trademark to identify your goods/services. The more unique a trademark is initially, the more protection it will receive. The unique trademarks are considered strong marks.

Strong marks include arbitrary marks - words that are used differently than the definition suggests, such as Arrow for shirts and Penguin for books. Strong marks also include invented words, like Kodak and Google. And strong marks can be portmanteau words - a combination of two words. Smog is a portmanteau word, combining smoke and fog.

There are so many words in the English language and so many ways these words can be played with - and there are so many foreign words that can be used or played with - that it is a bit surprising that there are not more creative and unique trademarks used as identifiers.

I recommend you do a thorough trademark search so you do not risk infringement and I always think it best to make your product/service stand out from all others by using an identifier that is as unique as what you are offering consumers.

Good luck.

 

[FlyingSquirrel7]

thank you

Wow, thank you for the very detailed and prompt reply. I really appreciate your help and think it's awesome that there are still "good people" out there that are willing to help others. I was looking for a "thanks" button for your post but did not see one.

Anyway, I find it interesting that even a generic / descriptive mark can eventually be protected legally. With my other brand name that I mentioned, I found someone else using a very similar (also generic / descriptive) brand name for essentially the same type of service in the same industry, started about a year after I began mine. Since I could not afford an attorney, I unfortunately had to send them a C&D letter from a downloadable template (I know..cringe...). Anyway, the other guy had a lawyer and they sent back a rejection letter basically saying the brand names are both descriptive / generic and therefore there would be no way I could do anything about it nor could I prove any damages from his client's actions. It sucks trying to run a bootstrapped business without access to a lawyer.

I will perhaps keep trying to think of more brand name ideas and do further research, as you suggest, but I cannot afford to have a lawyer do a thorough check for me. Still, I am really liking the brand name idea I mentioned before. Just in case, I bought the domain name already

Thanks again!!

 

[quincy]

Wow, thank you for the very detailed and prompt reply. I really appreciate your help and think it's awesome that there are still "good people" out there that are willing to help others. I was looking for a "thanks" button for your post but did not see one.

Anyway, I find it interesting that even a generic / descriptive mark can eventually be protected legally. With my other brand name that I mentioned, I found someone else using a very similar (also generic / descriptive) brand name for essentially the same type of service in the same industry, started about a year after I began mine. Since I could not afford an attorney, I unfortunately had to send them a C&D letter from a downloadable template (I know..cringe...). Anyway, the other guy had a lawyer and they sent back a rejection letter basically saying the brand names are both descriptive / generic and therefore there would be no way I could do anything about it nor could I prove any damages from his client's actions. It sucks trying to run a bootstrapped business without access to a lawyer.

I will perhaps keep trying to think of more brand name ideas and do further research, as you suggest, but I cannot afford to have a lawyer do a thorough check for me. Still, I am really liking the brand name idea I mentioned before. Just in case, I bought the domain name already

Thanks again!!

I will hope for your sake that the trademark you choose escapes all legal challenges.

Good luck with your business.

And thanks for the thanks. Much appreciated.