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Entrepreneur's Toolkit - How to Choose Your Trademark

Selecting Your Trademarks — When and How

Your business will likely have multiple opportunities to select potential trademarks. Typically, the selection of the name for your business is an opportunity to select a name that can function as a trademark. Alternately, you may select a doing business as (DBA) name that will function as a trademark instead of your legal business name. Additionally, you have the chance to select trademarks each time you select product or service names, logos, styles, slogans, and the like. Many businesses, particularly start-ups, fail to consider trademark issues when they are selecting these names and other marks, leading either to conflict with other trademark holders or selection of weak trademarks that cannot be enforced against competitors. Here are some suggestions that can help you avoid such pitfalls:

Don't fall in love too early.

One of the most-common struggles entrepreneurs encounter is getting too strong a connection with one proposed name early on. The attachment makes it hard to consider reasons why the mark might not be the best one for what they want to achieve. You're typically much better off if you go through a trademark evaluation process considering the other questions below with several possibilities in mind rather than just one.

Be aware of the trademark—marketing conflict.

It's natural to want your trademarks to directly convey something about your products or services to your customers. In fact, if you have a marketing team or person, they will commonly propose product and/or service names that directly say something about the product and/or service. Such names understandably make the marketing job easier. Unfortunately, this natural marketing push tends to lead to weaker trademarks, ones that will be struggle for you long-term, having to exist with other confusingly similar marks. Stronger trademarks don't often have the same hooks that seem to make marketing's job easier, but the value of your strong trademarks will be much greater in the end. Occasionally, it makes sense to select a weaker trademark for marketing purposes, but be aware of the costs of doing so, and don't disregard the other considerations below.

Understand your market/product/services.

Trademarks allow mark owners to prevent others from adopting confusingly similar marks, but not every use of a similar (or even identical) mark is confusing. No one, for example, expects an airline to also manufacture plumbing fixtures, or vice-versa, so two companies branded Delta can coexist. Similarly, consumers don't expect a pharmaceutical company to also manufacture sandals and other footwear, so consumers happily take their pills from Teva while wearing their Teva sandals with no confusion occurring. Take some time to understand what your products and services to be offered under your trademark are, and what they will be in the future, and what goods and services are close enough to both of those to be of concern for possible confusion. The international community has created a classification system of 45 classes to help understand what goods or services are roughly similar enough to increase chances of confusion.

  • The U.S. Trademark Office has a brief description of the various classes here (expand the list).
  • A more-detailed description of the classes is available here.
  • The U.S. Trademark Office also has a searchable manual of goods and services identifications that will give you the class numbers. Using the descriptions in this manual in your eventual trademark application (if truly descriptive of your goods/services) will streamline the application process.
  • NOTE: goods or services in different classes CAN be so related as to increase the likelihood of confusion, and goods and services in the same class can be so unrelated as to not be likely to be confused, so use some common sense in your evaluation.

Know what others are doing.

The purpose of trademarks is to allow consumers to know from whom they are sourcing products and services. You want your trademark to uniquely tie to you. If you pick a name that someone else is already using, you surrender uniqueness from the get-go. Worse, since they want the same thing from their trademark you want from yours, you risk receiving a cease-and-desist demand from the other user, by letter or lawsuit. The law presumes the first user in time has the stronger right. Avoid the problem by finding out what others are doing first, so you can select a mark that won't cause conflict:

  • Start the process by selecting at least a few names you like. Consider asking opinions of others about each name's impact for good or bad.
  • Conduct Internet (Google, etc.) searches with your chosen names and any obvious variations (e.g., same-sounding or looking words but with different spelling). Include additional words identifying or related to your products or services. Eliminate names that are too similar to others' marks used on similar goods/services.
  • Search free trademark databases in countries of interest to you (remember, trademark protection is a country-by-country question): U.S., Europe (coverage in many other countries as well). Remember to search for similar variants. Eliminate names that are too similar to others' marks used on similar goods/services.
  • As necessary, brainstorm new names and repeat the process. When you have a few good candidates remaining, consider having a trademark professional (attorney) review the names and provide recommendations.