🍦 Choosing A Name The Right Way 🍦
The 6-step process for picking a name that is legally set-up for success
Hi friends,
It’s been a bit longer than I’d hoped it would be. But life gets busy and there are only so many hours in a day.
Fortunately, I come bearing gifts, in the form of 3 podcast episodes and an essay on naming your business the right way.
I’ve been broadcasting these episodes live on Capiche.Fm, which you may remember from my essay on Clubhouse. If you subscribe to my (currently trending) show on Capiche, you’ll get a text notification whenever we go live. The notification will have a link to allow you to listen in, and you’ll be able to submit questions and even join the show straight from your phone! Anyway, I’d be honored if you’d subscribe.
You can find these broadcasts in podcast form on Spotify, Breaker, Google Podcasts, PocketCasts, RadioPublic, and Anchor.
Now, on to the good stuff…
In my short tenure as an “adult”, I’ve started two companies–a digital marketing agency and a clothing-turned-media company. In many ways, the two companies couldn’t have been more different. However, the main commonality between the two (outside of the obvious foolishness of co-founders willing to work with me on a daily basis) was the first step in both businesses: picking a name.
I still vividly remember spending hours sitting on the couch of my sister-in-law’s Gilbert, Arizona home debating with my partner Jacob on the merits of different names. We felt that we couldn’t have a real business if we didn’t have a name.
My next company was formed in a similar way. I spent weeks brainstorming names as I rode the shuttle bus, an hour both ways, to attend my classes on the ASU-Tempe campus. It wasn’t until I finally chose the name, Vöxtur, that I was ready to really get rolling on things.
Having spent a fair amount of time hanging around entrepreneurial folks, reading about them, and even working with them at my law school’s legal clinic, I have come to realize the massive weight that founders place on their business’s name.
And it’s not that crazy.
The first thing we do when a baby is born is give it a name. As humans, I think we have a hard time putting time, effort, energy, work, and, most importantly, love into something if it doesn’t have a name.
So, oftentimes founders have to choose a name for their startup before their startup can truly get started.
The Problem
Unfortunately, founders typically know very little about how to name their business. As I’ve developed my legal knowledge, I’ve discovered that a name is so much more than what is “catchy” or what customers might like. It’s actually a decision that can have serious legal implications.
My hope in writing this essay is that when you start your next company, you think back to this essay and avoid some of the common pitfalls that founders fall into as they seek to start their next big thing.
Instead of picking the first name that “feels right” or “sounds good,” I hope that founders will utilize the following 6-step process to find a name that (1) isn’t infringing on any existing trademarks, (2) is protectable via trademark registration, and (3) is not going to impede your growth farther down the road.
Behold, the 6-Step Naming Process:
Step 1. Brainstorm a list of 10 names
Picking a name is rarely as easy as choosing the first name that you like and rolling with it. What you’ll see as we dig into the next steps is that there are a plethora of characteristics that can disqualify your desired name from consideration.
Unfortunately, naming a business is not like naming a child. While two Kevins in your child’s kindergarten class isn’t a problem, two businesses with the same name can be a problem.
And the reality of this process is that there are enough potential disqualifying factors, that it’s worth it to prepare yourself to have most of your names disqualified. By brainstorming 10 good names first, you can avoid having to restart your name selection process over and over.
Step 2. Conduct a federal trademark search
Trademarks 101
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of one party’s goods from those of others. A service mark is the same, but for services. (FYI, a “mark” is the word, phrase, symbol, or design. It’s lawyer-speak for the thing to be trademarked.)
Essentially, owning a trademark protects you from others using your trademark to do the same things that you are doing. If you run an ice cream shop called Bird City, trademark law could protect you from a competitor opening up a shop down the street with the same name–or even a similar one!
Confusingly Similar Marks
So, it’s your responsibility to make sure that there are no registered trademarks that are confusingly similar, which is not an easy task. (I’m a law student in my final semester who does this for clients in our legal clinic and I’m still a little unsure of myself when I do this.)
Fortunately, the United States Patent and Trademark Office (USPTO) put together this Basic Facts About Trademarks booklet that I recommend referencing throughout this process. In fact, here’s a quote from the booklet that essentially explains what you’re looking for when you run a trademark search:
The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party.
The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.
Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can coexist, so long as the goods and services are not related.
That means your job is to make sure that there are no similar trademarks that are related to the same goods and/or services that your business is selling.
But what does similar mean?
The USPTO judges similarity under four main categories: sound, appearance, meaning, and commercial impression. It provides the following examples:
So, your first job is to make sure that there are no marks that sound similar, look similar, mean something similar, or have a similar commercial impression.
Now let’s go back to our ice cream business’s name: Bird City. We’ll need to see if there are any spellings of trademarks that sound the same as Bird City, like Berd City, Berd Sity, Berd Sitteeey, etc.
You’ll also need to see if there are any names that look the same, perhaps by using stylized fonts.
Then you’re going to want to see if there are any other trademarks that have the same meaning, by searching for names that use your name but in a different language.
Finally, you’ll need to run a couple of searches to see if there are any names that “convey a similar general meaning and produce the same mental reaction.” So for Bird City, we’d want to look up things like Bird Village, Bird Town, Bird Metro, Avian City, etc.
Related Goods and/or Services
Unfortunately, this isn’t the end of your trademark search. Next, you need to analyze whether any names that might be “confusingly similar” are registered in connection with related goods and/or services.
To put that in layman’s terms: is the name that could be considered confusingly similar being used to sell the same things (whether those things be goods or services) that you are going to be selling.
If we want to name our ice cream shop Bird City, we need to make sure that any other confusingly similar names aren’t being used to sell ice cream or something similar.
The USPTO says:
“Whether the goods and/or services are related is determined by considering the commercial relationship between the goods and/or services identified in the application with those identified in the registration or earlier-filed application.
To find relatedness between goods and/or services, the goods and/or services do not have to be identical. It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.
The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.”
The Basic Facts Booklet gives a few examples of related goods and/or services:
For our Bird City ice cream shop, we would probably want to look for marks used in relation to any frozen deserts. Things like gelato, Italian ice, slushies, and milkshakes could all spell problems for our ice cream shop.
Strong vs. Weak Marks
Once you’ve made sure there are no confusingly similar trademarks registered for related goods and/or services, you need to make sure that the name you are seeking to register can actually be registered. In other words, you need to make sure you have a strong mark, not a weak one.
If you want to register a trademark or to have strong trademark protection, you should be seeking a fanciful or arbitrary name. Fanciful names are made up names, like “Boowapzo” or “Repliotos.” Arbitrary names are things like “Kiwi” for a home-building company or “Bicycles” for an enterprise software company. They’re names with a known meaning, but that meaning has nothing to do with the goods or services that they’re being used to sell.
You’re next best choice, after fanciful and arbitrary names, is a suggestive name. The Basic Facts Booklet describes suggestive names as names that “suggest, but do not describe, qualities or a connection to the goods or services.” The Booklet gives the following examples: “Quick N’ Neat” for pie crusts and “Glance-A-Day” for calendars.
Suggestive, fanciful, and arbitrary marks are strong marks. Weak marks are descriptive or generic. It is wise to avoid these types of names.
Descriptive marks simply describe the goods or services, e.g. “Creamy” for yogurt or “World’s Best Bagels” for bagels. Registering a descriptive mark will require you to show distinctiveness or secondary meaning, which takes longer and requires more work to obtain a registration. You can choose a name that is descriptive and then seek to obtain registration later down the road after you’re able to show distinctiveness, but choosing that path can make it difficult to protect competitors from using your name and may ultimately be more expensive in the long-run.
Generic names are not protectable or registrable. They are free for everyone to use and cannot be taken by anyone. You can name your computer store “Computer Store,” but you won’t be able to trademark it or protect others from using it, because it is simply the generic name for the goods. Generally, you should avoid generic names.
Categories of Marks Ineligible for Trademark Protection
Lastly, there are a few categories of marks that are ineligible for trademark protection, so if trademark protection is important to you (which it probably should be), you should avoid the following categories of marks:
A surname (I can’t trademark “Elliott”)
Marks geographically descriptive of the origin of the goods/services (You can’t trademark “Seattle Bagels” for a bagel shop in Seattle.)
A foreign term that translates to a descriptive or generic term (“Bicycle” is generic in English and it’s still generic as “bicicleta” in Spanish.)
An individual’s name or likeness (You can’t trademark “Dwayne Johnson”)
The title of a single book and/or movie (Sorry, Taylor, you can’t trademark the name of your books.)
How to conduct a federal trademark search
Now that you have a basic understanding of what you’ll be looking for, I’m going to give you a quick rundown of running a federal trademark search with the USPTO.
To start your federal trademark search, you’ll need to visit the USPTO’s website. The first page looks like this:
(This isn’t the most user-friendly site, so don’t feel bad if you struggle to get the hang of things. I’ve spent hours on here and still struggle with it!)
Click Basic Word Mark Search, and then type your proposed business name into the box. We’re going to see if we can trademark the name of our ice cream shop, Bird City.
You’ll see that this search of “bird city” revealed 12 results.
Now, we can see if there are any marks that are similar under the four categories: sound, appearance, meaning, and commercial impression. It is likely that most of these could be considered similar, so we’ll want to dig into whether they are related.
Lets’s click on the first result, “Bird City Americas.”
I’ve outlined in red the goods and services description. The “Bird City Americas” trademark has been registered in relation to a nonprofit conservancy project. This is not likely to be found related to ice cream, so we should be in the clear for “Bird City Americas.”
To complete this part of our search, we would want to check all of the results to make sure that none of the similar names are for related goods.
Then, as we mentioned in the Trademarks 101 section, we’ll want to run some other searches for marks that could be considered similar like “Bird Sity,” or “Berd City.”
Once you’ve finished your search with the USPTO you hopefully will know which of your names are likely to be eligible for federal trademark registration, and then you’ll be ready to continue your trademark search at a state level.
Step 3. Conduct state trademark searches
This might be really tedious, but it’s probably worth spending a few hours searching each state’s trademark database for the names that survived the common law and federal trademark searches.
Why is it worth biting the bullet and doing a state-by-state trademark search, you might be wondering? Here’s why:
Just because a mark isn’t eligible for federal registration, it might be eligible (and registered) for state registration. Federal registration essentially requires the mark to be used in multiple states, so if a company is only doing business in one state, they could have a state registration but no federal registration.
Then, if there is a state in which you seek to conduct business, and your business’s name is already registered as a trademark for similar goods and/or services, you could end up needing to either (1) operate under a different name in that state, or (2) change your name.
It would be very frustrating to be in the process of expanding your startup into some random fly-over state only to get a cease and desist letter from some mom-and-pop shop that has the same name. It’s a problem you don’t want to have to deal with. So take a few hours to do your homework. Future-you will hate present-day-you if present-day-you doesn’t take the time to run this search and future-you ends up in court fighting a trademark infringement lawsuit.
Okay, now you’re done searching on the terrible government databases (BTW, it’s 2021 and the government’s websites and databases are still terrible. Who’s going to solve this?!?) Now, you get to do what lawyers call a common law search. Or what I call a Google search.
Step 4. Conduct a common law trademark search
This step is important because just because a trademark hasn’t been registered, doesn’t mean it doesn’t exist. Once you begin using a mark in commerce, you have a trademark. So you need to make sure that no businesses are using the same name for the same goods and/or services.
Luckily, the process is pretty simple. Go type your remaining names into Google and see what you come up with. Is anyone using your name? If so, what does their company do? Is it similar to what you’ll be doing? You’ll also want to do a similar process to what we did with the USPTO database, and search for similar names and related goods/services.
If you don’t run into any hiccups with your common-law google search, you’re likely in the clear from a trademark perspective, so the final step is really more a marketing/business question.
Step 5. Lock down domain and handles
The final thing that you’ll want to do is make sure that you can lock down acceptable domain names and social media handles. Birdcity.com is much better than shopbirdcity.com. So if you have a few names left on your list, this could be the deciding factor.
Once you’ve found names that have made it this far and that have acceptable handles and domains available, lock them down. By that I mean: purchase the domain names and create accounts with the social media handles. And don’t tell a soul until you do. The last thing you want is to find yourself in a domain negotiation with some opportunist “friend” who bought the domain you want after you asked their opinion on it. And yes, this has happened.
Now that you’ve made it this far, here is the most important step.
Step 6. Have a trademark attorney check your work
You might be thinking why did I spend 10 hours doing all of this if I was still going to need an attorney? Great question.
Here’s why: you just saved yourself thousands of dollars. You just made sure that the names you are having your attorney run a trademark search on have a high likelihood of being acceptable. If you just gave the attorney your list of names, they would likely have to spend hours doing the research you just did, at a very high hourly rate, only to have the names be unusable. You just cut out that expensive step.
Plus, getting a trademark attorney’s opinion can help you fill in the gaps. I’m not a trademark expert (and more importantly, I’m not an attorney), and it is worth getting the opinion of somebody who spends their life helping people with trademark registrations and disputes to give you the green light. In the long run, it’ll save you serious time and headaches.
Anyway…
I hope you enjoyed this issue and learned something as well! I know that this can all be a bit tedious and technical, but I’m confident it will be extremely useful the next time you need to name a business! If you liked it, please do one of the following!
Finally, please don’t forget that I am not an attorney and this is not legal advice. Check out the full disclaimer here.