Considerations When Selecting A Brand | Romano Law

Considerations When Selecting A Brand

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Considerations When Selecting A Brand

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You are launching a new company, product or service and need a brand name.  There are many factors to consider when selecting a brand name. One factor that you may not have weighed is the ease by which you can trademark a brand name and how much legal protection that name would receive if others wanted to use it.  Trademarks offer an important way for businesses to protect their brands.  However, many brand names are not available or advisable for selection.  An experienced attorney can assist you in selecting a brand name. 

What Is a Trademark?

trademark is a word, phrase, symbol or design (or a combination of those things) that identifies and distinguishes the source and quality of certain goods or services from the goods and services of others.  It is important to understand that the name of your brand is not protected unless it is used in connection with your products or services to represent your brand.  Your brand name must also distinguish the source of your products or services in the marketplace from others.  Under trademark law, the words in your brand name, as well as how the words appear (color, font, etc.), can be trademarked so long as certain requirements are met.  Finally, your brand name must also be used in commerce for the sale of particular goods or services (often called “classes”) in order to receive protection.

If you meet the above requirements, you will have some trademark rights under common law.  However, these rights are limited if the trademark is not registered.  Federal registration with the United States Patent and Trademark Office (“USPTO”) gives you added protection and puts the public on notice that these marks represent your brand.

How Can You Select a “Strong” Mark?

The goal for any business is to select a name that is distinctive so customers can easily remember it and it stands out from the competition.  Fortunately, a strong brand for business reasons is often a strong trademark as well.

Brand names that make for weak trademarks include:

  • Generic marks. These use words that are typical names for a product or service (ex. Department Store).  Generic marks are not trademarkable.
  • Descriptive marks. Common terms which describe a characteristic of the product or service are generally not protected or will constitute a weak mark (ex. New York Pizza).
  • Personal names. Using your own name may seem to be distinctive, but it can be difficult to trademark because the USPTO feels it is bad policy to allow one person to have the right to use a name that many others in the population may have.  There are exceptions.

A strong trademark for a brand would include the following:

  • Suggestive marks. The name may suggest certain qualities of the product or service, but it takes imagination to make the connection (ex. Netflix).  Suggestive marks, however, are not as strong as arbitrary and fanciful marks.
  • Arbitrary marks. These marks use a real word or phrase but apply it to something vastly different (ex. Apple for computers).
  • Fanciful marks. Made up words and phrases are among the strongest trademarks (ex. Adidas).

The stronger your trademark, the better your chances of trademark protection.

When Should You Seek Legal Advice?

It is important to consult an attorney early in the process of choosing a brand name.  If you wait until you have been actively using a particular name you may run into two problems.  First, your brand is not trademark-worthy so someone else could use it and you would not have recourse to sue for trademark infringement.  Second, someone else may already be using a similar trademark.  In this instance they may already have protection and, in turn, may sue you for trademark infringement.  Either way, you wasted money promoting a brand name that has little or no legal protection and now you may have to incur additional costs to rebrand, as well as legal fees.  Furthermore, you may have to pay someone else money for trademark infringement.

Best practice is to consult an attorney before you start using a brand name. 

Notice

This Blog is made available by Romano Law PLLC for general informational and educational purposes only, not to provide specific legal advice. By using this Blog you understand that there is no attorney client relationship between you and Romano Law PLLC or any individual contributor. You should consult a licensed professional attorney for individual advice regarding your own situation.

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