In my trademark practice, I am often contacted by business owners to protect a product or company name that either cannot be protected by trademark or is already being used by another company. Sadly, many of these entrepreneurs have invested considerable money, research, and even marketing efforts in the name.

Building Your Brand and Involving Attorneys Early

A first step in building your brand is choosing a name. Most entrepreneurs realize how challenging it is to decide on a name, whether for a company, product, or services. Few think about the legal pitfalls of this important task until it’s too late. A generic or descriptive name may prevent trademark protection. A name that’s confusingly similar to another company’s may expose you to a costly infringement dispute. Even big companies make mistakes. For example, Apple launched the iPhone in 2007, but it did not own the trademark iPhone. Another company, now owned by Cisco, had started selling a product called iPhone in 1996 and sued Apple—an avoidable and costly dispute.

It is important to involve a trademark attorney early in the process of naming and branding your business or product. Trademark attorneys can help you navigate the legal and practical issues in selecting a name and building your brand. They can help you identify the level of protection your name may be given (if any) before you invest heavily in the marketing and development of the name. Trademark attorneys will also assist in initial trademark clearance or coordinate a trademark clearance search to identify other businesses using a name that may be confusingly similar to your proposed name that could prevent registration, might accuse you of infringing its trademark, or prevent you from expanding into new areas.

Types of Trademarks

“Trademark” refers to a name of a company, product, or service. Trademarks are categorized into levels of distinctiveness (as applied to particular products), with trademarks of greater distinctiveness enjoying higher levels of protection:

Fanciful trademarks receive the most protection. Fanciful trademarks are made up or coined words. Examples are “Jell-O” for gelatin, “Scotch tape” for cellophane tape, “Kleenex” for facial tissue, “Kodak,” and “Xerox.”
Arbitrary trademarks receive the second strongest protection, though competitors may contend the trademarks fall into a lesser-protected category. Arbitrary trademarks are words that have no direct relation to the goods. Examples are “Dutch Boy” for paint that is not geographically descriptive and “Gateway” for computers.
Suggestive trademarks receive slightly less protection. Suggestive trademarks are those that have an implied association with a product that is not immediately descriptive, usually requiring imagination to connect to the goods’ characteristics. Examples are “Insanity Sauce” for hot sauce, “Apple-a-Day” for vitamins. Suggestive trademarks are protected without proof of secondary meaning.
Descriptive trademarks are not protected unless they acquire “secondary meaning” through long-term use, extensive advertising, and the public’s association of the name with a particular company. These trademarks are descriptive words that describe a person, a place or an attribute of a product. Examples are “Slickcraft” for speed boats, “Japan Telecom” for telecommunications services aimed at the Japanese community, and “Cran-Apple” for cranberry apple juice drinks. Surnames may also be descriptive trademarks.
Generic names receive no protection because the words are definitional in nature and necessary to refer to a category of goods or services. Examples are “computer” as a brand name for computers, “shredded wheat” for pillow-shaped breakfast cereal, “air-shuttle” to describe hourly plane service.

Understanding these core concepts of trademark law is vital to choosing a name that will have the strongest protection the law can afford and provide the greatest return on your investment in one of your business's most valuable assets.