Starting a business? Well then you definitely need to read this post by fellow mother and lawyer Tirzah Lowe. She has some excellent tips on how and why you need to think carefully before choosing a name for your business.
Guest post by Attorney Tirzah A. Lowe
When I was pregnant with my first child, I spent weeks pouring through name books and creating huge lists of potential monikers to review with my husband. I instinctively knew that a good name would serve her well the rest of her life. The same benefits can be reaped if you select a good business trademark. The difference is that if you choose a less than perfect name for your child, the worse he is likely to suffer is teasing on the playground. If you make a misstep in picking your business name, however, you could be faced with customer confusion or worse, a trademark infringement lawsuit that shuts down your business altogether.
Here are three guidelines for helping you pick the perfect name for your business:
If you name your daughter “Blue Ivy” like Beyoncé and Jay-Z, you might get awkward looks but no one can sue you for it. In the business world, however, a trademark infringement action can be lodged against you if you copy another company’s trademark. “Innocent” copying is no excuse. You could still be forced to change your name and pay damages. In addition, even if the name you pick is not exactly the same as another company’s mark, the Trademark Office or a judge could concluded that the names are “likely to be confused,” which is the test for trademark infringement.
The best way to avoid copying someone else’s trademark is to conduct a trademark clearance search prior to picking your business name. The fact that the city or state where you are registering your company has approved your name does not mean you are safe from a trademark infringement suit. You should conduct a thorough internet search and, if possible, also have a trademark attorney conduct a search of the U.S. Patent and Trademark Office Register and assess any similar names. She can determine whether the marks are similar enough to raise the specter of trademark infringement.
Pick a Strong Name
While a “strong” personal name might be one where you could imagine “Supreme Court Justice” in front of it, a strong business name is one that is non-descriptive. Some examples of descriptive trademarks, i.e., “weak” marks, include SPICY SAUCE for salsa, COMPUTERLAND for a computer store and ARCH PRESERVER for insoles. If you pick a weak mark, you will have a harder time registering your mark, establishing rights in your mark, and defending your mark against subsequent users.
Instead, consider selecting a strong trademark, one that is either “fanciful” or “arbitrary.” “Fanciful” marks are completely made up words such as STARBUCKS and VERIZON. Try your hand at generating your own nonsense term. While this strategy may not make sense for naming your kid, fanciful trademarks are the absolute strongest and legally defensible trademarks out there. “Arbitrary” marks are also strong, though not as strong as fanciful ones. Examples of arbitrary marks include AMAZON for an internet retail site, PENGUIN for books and APPLE for computers. The names are words, but they have no connection to the products or services offered.
The final legal category of marks is “suggestive” marks. My guess is that most business names and products fall into this category. These are marks that allude to a quality of the product or service, such as HABITAT for home furnishings, GLACIER for ice and ROACH MOTEL for an insect trap. These marks are neither weak nor strong. Some “suggestive” marks teeter on the edge of “descriptive.” While trademark attorneys would prefer you stay far away from the descriptiveness cliff, we are there to help you through should you decide you want to take the jump and choose a descriptive mark.
Next week: Part 2: Don’t Fall in Love with a Name until You Get Your Partner’s Approval
Tirzah A. Lowe is Partner at Knobbe Martens in Irvine, CA and practices trademark, copyright and internet law. In 2012, she received the “Best Lawyers Under 40” Award from the National Asian Pacific American Bar Association and the “Rising Star” Award from the Association of Corporate Counsel, Southern California. Ms. Lowe is the former president of OCAABA and a graduate of Yale University and UCLA School of Law.