10 Essential Brand Name Legal Questions to Ask Before Picking One

brand name legal questions

If you’re starting a small business or developing a new product, you need to give it a name.

That name will become your brand name and it has the potential to become very valuable. You need to make sure you pick something amazing.

However, picking an amazing brand name isn’t enough to position your business or product for success. Before you invest time and money into developing a brand reputation around that amazing name, there are some critical brand name legal questions you need to answer to avoid getting into big and expensive trouble later.

Ask These Brand Name Legal Questions First

1. Do You Want to Protect Your Brand Name?

Do you want to make sure that no one else in your line of business can use the same brand name? Imagine how confused consumers would get if you and a competitor used the same brand name. What if the competitor’s products were inferior to yours? You wouldn’t want consumers to think those products came from your company.

The only way to fully protect your brand name and make sure this doesn’t happen is to register it as a trademark with the U.S. Patent and Trademark Office (USPTO).

2. Is the Brand Name Also Your Business Name?

If you’ve registered your business name in your state, you can start doing business. However, registering your business name (or “trade name”) is not the same as registering the brand name as a trademark.

Yes, your business name and brand name could be the same, but a trade name identifies the commercial entity while a trademark identifies intellectual property that can be protected under U.S. trademark laws. Make sure you protect your business name as a brand name, too.

3. Is the Brand Name Descriptive and Obvious?

Does your brand name describe the products or services it represents? Is it very obvious what your business, product, or service offers to consumers by its brand name? If you answered “yes” to either of these questions, then it will be difficult to protect your brand name even if you can federally trademark it. The less descriptive your brand name is, the stronger it is and the greater protection you can get for it.

For example, The Pool Store is extremely descriptive. If this store sells pool supplies and related goods and services, it would be nearly impossible to trademark this name. However, a pool supply business named Pulique, which doesn’t directly and obviously describe the products or services being offered, might be trademarkable and protectable.

4. Does the Brand Name Include a Person’s Name or Surname, Geographic Location, or Generic Term?

If your brand name includes a person’s name or surname (including yours), a geographic location, or any generic term (like “pool” and “store” in the previous example), it will be more difficult to get trademark protection for it. In fact, you might not be able to protect the brand name at all.

For example, The Pool Store couldn’t simply change the brand name to Johnson’s Pool Store or Newtown Pool Store and expect to be able to trademark it. The name would still be considered too descriptive and generic to trademark.

5. Is the Brand Name Distinctive?

Distinctiveness is the opposite of descriptiveness. If your brand name is descriptive, it is not distinct and even if you can get a trademark registration, the protection you’ll get for your mark will be limited. In order to get the highest amount of protection for your brand name, choose a name that does not describe the goods or services being offered in any way.

Here are three ways to choose a strong and distinctive mark:

  1. Use a suggestive name that takes some thought to figure out what it represents like Greyhound or Chicken of the Sea.
  2. Use an arbitrary name that isn’t related to your industry at all like Apple or Amazon.
  3. Use a fanciful or coined name that you make up like Google or Exxon.

6. Does the Brand Name Give You a Competitive Advantage in the Market (or Could It Do So in the Future)?

One of the main reasons people trademark and protect their brand names is because those names give them competitive advantages in the marketplace. For example, there is no doubt that having the Apple name on a product gives it a competitive edge.

Even if your brand name doesn’t have a reputation in the marketplace yet, the purpose of brand building is to develop that reputation. Don’t let your hard work go to waste and give up your competitive advantage by not protecting your brand from day one.

7. Does the Brand Name have Commercial Value (or Potential Commercial Value)?

Your brand name is like an energy source for your business.

Digging back into science class, you might remember learning about potential energy (i.e., stored energy). Similar to that concept, your brand name is bursting with potential commercial value. If you don’t trademark and protect your brand, you’re not giving it a chance to store and later use that potential commercial value.

8. Are You Willing to Protect the Brand Name?

Here’s a hint: Your answer to this question should be yes. Trademark registration can be expensive for small businesses, but as long as you file the necessary renewal documents and keep using your mark in commerce as it was registered, you retain your trademark rights forever.

Federal trademark filing fees start at just $225. You should also conduct a comprehensive search before you file a trademark application (see #10), which can cost anywhere from $500 and up. Spread that cost over multiple years that you’re in business, and you’ll see that trademarks are actually very affordable.

It’s hard to argue against getting trademark protection as soon as possible when you consider that protecting your brand could save you thousands or millions of dollars in the future if you’re accused of infringement.

9. Are You Willing to Enforce Your Right to Protect Your Brand Name in the Future?

If you’re not willing to enforce your trademark rights and protect your brand name in the future, then there is little reason to trademark it. The value of a trademark gives you the exclusive right to use your mark in specific lines of business. Trademark registration is intended to reduce consumer confusion so there is no question who and where goods and services come from.

If none of that matters to you, then trademark registration isn’t necessary. However, you can bet that it matters to other businesses. Unfortunately, your entire business is probably in trouble if none of that matters to you, so registering your trademarks is probably the least of your worries.

10. Is Anyone Else Using the Brand Name?

First isn’t always good enough in branding. U.S. trademark law gives rights to the first person or business who uses a mark (including a brand name) in commerce, so don’t think you can use your brand name without encountering trademark problems in the future.

In other words, clearing your business name as a trade name or doing a Google search or a search of the USPTO database to make sure no one else is using your brand name isn’t good enough. You need to conduct a comprehensive search of active and inactive trademarks, business names in all 50 states, social media profiles, domain names, common law, and more.

This is one area that it’s critical you invest time and money because someone else might already be using your brand name. If they used it first, they get the trademark rights to it.

The lesson to learn is simple. Don’t fall in love with a brand name until you answer the critical brand name legal questions above. You just might have to change that amazing name.

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Kelley Keller Kelley Keller is CEO of Kelley Keller Law and a 20-year veteran of the intellectual property law field with experience helping businesses of all sizes (including many household brands) identify, manage, and protect their trademarks, copyrights, patents, and trade secrets.