When launching a new business or product, one of the most crucial decisions is choosing a brand name. However, many entrepreneurs do not realize the legal implications and potential pitfalls involved until it is too late. Clearing and protecting your trademark from the start can save you from costly headaches down the road.
Is Your Brand Available?
Before investing significant resources into branding, marketing, and launching under a new name, the first step is to conduct a comprehensive trademark search. You will want to ensure the name you have selected is truly available for use and registration. Companies can spend immense time, money, and effort building out a brand, only to discover another party already laid claim to that trademark. Not only can this derail your entire branding strategy, costing you time and money, but it opens you up to legal liability for trademark infringement.
Is Your Brand Protectable?
Assuming your desired name is available, the next consideration is what level of trademark protection it may qualify for based on the distinctive nature of the mark itself. Trademark strength and registrability falls into five categories, from strongest to weakest.
Fanciful marks are made-up, coined words with no dictionary meaning, like Kodak. These offer the highest level of trademark protection since they are inherently distinctive. Arbitrary marks are real words with no logical connection to the products or services offered, like Apple for computers. Because the word is unrelated to the goods or services, arbitrary marks are considered highly distinctive and strong trademarks.
Suggestive marks require some mental effort to associate the term with the products or services. The name suggests a connection but does not directly describe it. While not as strong as fanciful or arbitrary, suggestive marks can still receive solid trademark protection. Descriptive marks merely describe a feature, function, quality, ingredient, or characteristic of the products or services. Descriptive marks are quite weak and difficult to protect when first used, as they are not inherently distinctive. In order to obtain registration of these marks, you will have to prove that your goods or services are so prevalent so as to create a strong association in the minds of consumers, known as acquiring secondary meaning.
Generic terms are the common names for the products or services themselves. Since they refer to the general product category, generic terms cannot be trademarked under any circumstances.
As the descriptions illustrate, fanciful or arbitrary marks hold the most legal strength and protectability right out of the gate. Descriptive marks, on the other hand, are only registrable once the product or service has acquired enough marketplace recognition for the name to be distinctly associated with your specific brand.
Consult with an Attorney
Before pouring capital into naming, branding, and marketing a new product line or business, it is absolutely essential to clear the trademark availability and evaluate the legal strength of the proposed mark. By conducting professional trademark screening and consulting with an attorney early on, you can avoid investing heavily into an unmarketable brand or inadvertently infringing on someone else’s trademark rights. Contact Bayside Counsel today for a consultation on your proposed mark and get your new brand on the right track from day one.