Naming Your Business: Choosing A Name Capable of Trademark Protection

Choosing a distinctive name is important from a business perspective, but it is also important if you want trademark law to protect your business name. A business name is potentially a trademark protected by the law, but this protection depends on the type of name you choose.

As a general matter, the more unique or distinctive the name is, the greater trademark protection it receives. Fanciful marks (made-up words like "Kodak"), arbitrary marks (existing words used in a way unrelated to their normal meaning, like "Apple" for computers), and suggestive marks (those that hint at a quality or aspect of the product or service, like "Netscape") receive the highest level of protection. You can register these kinds of trademarks immediately, without any evidence of "secondary meaning" -- i.e., proof that, through your use of the name in commerce, the public has come to identify it specifically with your good or service. Similarly, in the event of a lawsuit, you would not need to produce evidence of secondary meaning in order to make out your case.

In contrast, a merely descriptive name can only receive full trademark protection after it acquires secondary meaning. Some examples include names that describe the product or service directly, such as Speedy Rental Car, or one that merely uses a person's name, such as Smith Computers or Jane's Collectibles. Terms that describe the geographic location of a good or service, like the New York Times, also are considered descriptive, and they can be protected as trademarks only upon proof that through use they have acquired secondary meaning. If you choose a merely descriptive name for your citizen media site or blog, you would not be able to register it at first, and you would not be able to successfully sue someone for using a confusingly similar trademark. You might be able to register it and/or bring a successful lawsuit at a later date, however, assuming that Internet users at some point come to identify your business name specifically with your work (i.e., it acquires secondary meaning).

Lastly, a generic name can never receive trademark protection. A generic name is identical to the product or service to which it attaches. For instance, calling a business that hosted email accounts "email" would be a generic name. Keep in mind that a term can be a generic name for one product or service, but a valid trademark for another. For instance, "Apple" is a generic name for selling apples, but a valid trademark for computers, and "Bicycle" is a generic name for selling bicycles, but a valid trademark for playing cards. Some geographical terms like "swiss cheese" and "French fries" are also generic because they are synonymous with the item itself. However, this does not mean that all geographical names are generic.

Choosing a business name presents a special problem for a community journalism site or blogger with a regional focus, where using a geographical or other descriptive term makes intuitive sense. After some thought, you may decide that the appropriate descriptive name is more important to you than strong trademark protection. Or, you may come up with a creative way of using a geographical term in a distinctive way (e.g., h2otown). Be aware also that your descriptive name may obtain secondary meaning should your site prove an influential and often-visited source of information -- think, for instance about the New York Times. So, keep in mind that you may start out with a business name that enjoys little protection under trademark law, but the amount of protection may grow over time.


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