What will be the name of your product?

Choosing a trademark for your product can be more challenging than it seems. You may have already overcome the toughest hurdle of developing the product, so what can be so difficult about creating a name for it? Two key issues tend to come up whenever you try to choose a trademark for your product:

  1. Should the name be descriptive or more unique?
  2. What obstacles might be in the way of using or registering the new trademark?

Should you choose a descriptive trademark?

For many of us left-brained engineer types, it may be simpler and quicker to come up with a name that flat out describes the product. It seems straightforward. Let’s call the product by what it actually does. The problem with that approach is a tougher hurdle to overcome in registering a merely descriptive mark.

When you apply for a name that may cause the USPTO examining attorney to believe that the name describes a particular characteristic of your product, there is a good chance you may receive an Office Action rejection on the basis of your mark being merely descriptive. You will then have the burden of persuading the examining attorney that the mark is not merely descriptive, or that the mark is worthy of registration nonetheless.

If possible, try to come up with a name that is less descriptive and definitely not generic. Keep in mind that the degree of descriptiveness is determined in relation to your goods or services. A mark that is descriptive for one product might not be for an entirely different product.

How to choose a trademark not similar to registered marks

It is critical to create a name that is not confusable with trademarks registered by others. Likelihood of confusion considers several factors, but the two biggest factors are the marks themselves (appearance, spelling, pronunciation) and the relatedness of the goods or services. This is where a knockout search done prior to filing will come in handy.

If you skip a proper trademark search, you may save a few bucks initially only to find out several months later that your applied-for mark is being refused registration. Now you’ve lost months of time and possibly your initial investment in branding and marketing.

Keep in mind that others may have trademark rights by virtue of their earlier usage even if they never registered their marks. It is possible for an owner of an unregistered common law trademark to oppose your trademark application or even sue for trademark infringement. You should confer with your trademark attorney on whether it would be advisable to search for common law trademarks before filing a trademark application.

Can the name of your product differ from your company name?

Definitely. A company can own a variety of trademarks that sound nothing like the corporate name. In fact, it is entirely permissible to omit the corporate name in the marking and packaging of the trademarked product.

The opposite is also acceptable in that your corporate name, or a version of it, may serve as the trademark for your product.

Delay can lead to exponentially greater costs

As soon as your incorporation is complete, file a trademark application for your chosen name immediately. You do not have to wait to use the mark before applying. Delay can lead to substantially greater costs in having to oppose another trademark application filed before yours. For certain early stage startups, a trademark opposition may be cost prohibitive, in which case a new name will need to be adopted.

Astute readers may notice that this post mentioned how owners of unregistered marks may have superior rights. So why bother with registering your mark? Because you will end up with rights and advantages that far exceed the cost of registration, and failure to register your mark promptly may subsequently lead to costly changes or legal actions.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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