What is in a Name? Hopefully not a Description.

According to the United States Patent and Trademark Office (“USPTO”):

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos. The term "trademark" is often used in a general sense to refer to both trademarks and service marks. FN1  

Here at Smith Shapourian Mignano PC, some of our clients desire to trademark their business name to receive protection across the States, during the incorporation process.  In such cases, trademarking a business name and logo with the USPTO may be a worthwhile investment.  For the purposes of this article, we only discuss trademarking your business name.  For a fuller discussion on trademarking a business logo, please see our article here.

A registered trademark provides the exclusive right to use a business name in connection with identified and applicable goods and services, and provides business owners with enforcement rights.  In summary, significant advantages to trademarking a business name include but are not limited to:

• Nationwide trademark protection and possibly abroad, as U.S. registration may allow for trademark registration in other countries;
• Use of the registered trademark symbol, ®;
• Public record of your ownership and the date of first use, discouraging others that conduct a proper trademark search from using your business name; and
• Enforcement rights in federal court.

Unfortunately, sometimes, the USPTO initially rejects applications to trademark a company name.  The two most common reasons for rejection are likelihood of confusion and descriptiveness.

First, a trademark application for a company name may be rejected based on the fact that it is likely to be confused with another name already trademarked with the USPTO.  According to the USPTO:

Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.  Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion. FN2  

To that end, when choosing to trademark a company name, you may want to consider whether it sounds similar to or is spelled like another registered trademark.  The USPTO provides excellent examples of this here.

Second, a trademark application for a company name may be rejected based on the fact that the company name merely describes the product or services.  According to the USPTO, a company name may be refused registration:

...if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.  For example, the mark “CREAMY” would be merely descriptive for yogurt and the mark “WORLD’S BEST BAGELS” would be merely descriptive for bagels. FN3

Aside from likelihood of confusion and descriptiveness, a trademark application for a company name may also be denied based on the fact that the company name describes a geographical territory or is merely a surname.  More information about the basis for these denials is located here.

Footnotes:
1. See https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright.
2. See http://tess2.uspto.gov/webaka/html/Likelihood/Likelihood_of_Confusion.html.
3. See https://www.uspto.gov/trademark/additional-guidance-and-resources/possible-grounds-refusal-mark.

Smith Shapourian Mignano PC is available to answer any questions or concerns you may have regarding trademarking your company name.  

This blog does not constitute solicitation or provision of legal advice, and does not establish an attorney-client relationship. This blog should not be used as a substitute for obtaining legal advice from an attorney licensed or authorized to practice in your jurisdiction. You should always consult a suitably qualified attorney regarding any specific legal problem or matter in a timely manner, as statutes of limitations may bar your claim.