The 3 Main Steps to Pick and Clear a Trademark Name

You want this done right.

• You are picking a name for your business or product.
• You’ll be investing time and money behind that name.
• You want to minimize problems down the road.

There is no foul proof method to pick and clear a trademark name. Below are basics which give an overview of useful steps.

The main steps are:

1) Pick a name

2) Search to determine if others are using the name or a similar name

3) If another is using the name or a similar name, then determine if your use is different enough from the other

1) Pick a name

The sky is the limit for possible trademarks.

Understand what you shouldn’t pick — based on trademark law.

Don’t pick a name which:

• is generic, which means the word or phrase of the trademark is the common word for the good or service (ex. the word “grain” for selling oats)
• immoral, deceptive, or scandalous. Immoral or scandalous, means something you’d be embarrassed to say out loud when strangers are around. And, deceptive, means if you described your good/service with a name/phrase you’d be caught in a lie if the true facts behind the good/service were revealed.

Don’t pick these types of names, although you may gain certain rights — they aren’t the best:

• a word or phrase which is descriptive of the good/service, which means the word/phrase is a normal or common adjective or quality to give information about the good/service (ex. the word of “cinnamon” to describe a cinnamon flavored product)
• a word/phrase which is a geographic location (ex. Connecticut Apple Farm)
• a word which is a surname (last name) (ex. the word “Johnson” for trademark name)

Also don’t pick a famous brand name — just avoid it.

That’s what you shouldn’t pick.

Now you have to pick something.

Strong trademarks: The strongest trademarks are ones which are fanciful or arbitrary.

• Fanciful means the words are made up (ex. using “7times2nowhere” for the name of a clothing brand).
• Arbitrary means using a random word for something which has nothing to do with what its naming (ex. using “toothpaste” for the name of a bank).

Less strong trademarks: Less strong trademarks are ones which are suggestive.

• Suggestive means the words themselves are related to what the words are identifying because the words give an added idea of what the goods/services are, but it’s not a common description (ex. “Here N’ Comfy” for a hotel chain).

Determine if the name has an unintended meaning you didn’t know about

Double check the meaning of the name by searching on the internet for any unintended meanings. Also, check the translation of the words/phrase to determine if they have an unwanted meaning in another language. Use Google Translate.

2) Search to determine if others are using the name or a similar name

You’ve picked a name, now see if someone else is already using that name or a similar name.

It’s important to understand that a similar name may cause you the same problems as the exact same name.

Therefore when searching also look for similar names in addition to exact matches.

The mark (word/phrase) is similar if it gives the same commercial impression to a potential buyer. The name/mark does not need to be exactly the same to be similar. If the name/mark would be confused— one for the other by a consumer — then they are similar.

Ways to find similarity:

• If the marks look alike.
• If the marks sound alike.
• If a translation of one mark is the same or similar in meaning to the other mark.
• If a picture/graphic in one mark is the same or similar in meaning to the other mark.

You know what to search for now— exact matches and similar trademarks.

Now search.

The primary places to search are:

A) Search on TESS, the Trademark Office database of registered marks, pending applications for marks, and cancelled/abandoned marks.

B) The internet. Search Google.

The secondary places to search are:

• State Trademark Databases — Trademark Office Compilation of State trademark websites.
• Business Name Databases — Each State has a website for registered businesses.
• Internet Domain Name Databases — (ex. GoDaddy domain search for available domains)
• Social Media Names
• WIPO Search — World Intellectual Property Organization Global Brand Database

If there are no exact matches or similar names, that’s good, you a possible name.

If there are exact matches or similar names, continue on.

3) Determine if the uses are the same if the mark is the same or similar to another mark:

What do you do if the name or similar name is already being used:

Understand that the exact name/phrase or similar name/phrase can possibly be the used, if used for a different use. (If the mark is a famous mark, just avoid it, even if for a different use.)

The different use needs to not cause confusion to the consumer that the previous use and the new use could be related.

• This confusion is called likelihood of the confusion which is when a potential consumer believes what they are buying is from the previous user of the trademark.
• So if your name is for a food product and the previous use is for car tires you’ll probably be ok. The consumer won’t be confused — and believe — that your company who is now selling food under the same name which was used for identifying car tires, is the same company who was selling car tires.
• That said, the analysis of similar use is not always straight forward, so having a unique name which is not similar to another has its advantages.

When is there similarity of use:

• This can be a related type of good/service (ex. a t-shirt is similar to a collared shirt).
• This can be if the good/service is commonly sold by companies under the same name (ex. if companies will commonly sell stoves and refrigerators under the same name, the goods can be considered similar)
• This can be if the good/service is commonly sold in the same place (ex. if paint and wood stain are sold in the same place on an online store)
• This can be if there is a service and good intertwined (ex. The service of an online store selling clothes — and clothes. Use in the form of a name for an online store selling clothes and use in the form of labeling clothes — these can be considered similar uses. This goes either way — services first, goods later — goods first, services later.)

Conclusion:

These 3 steps will help you pick a trademark name.

The 3 steps work best to see what is not a good name which is a great start — but a guarantee that it won’t be a bad name is harder, which is what everyone wants. Unfortunately.

Only time will tell if the trademark name will not cause you problems down the road. The environment/market will inform you if your choice was a good choice. That said, doing the steps of knowing what type of name not to pick based on trademark law, doing a Google search, Google translation, and TESS search — can save you a lot of time, money, and problems.