Learn about trademarks, copyrights and more.
5 min read
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The following excerpt is from Brad Flowers’s The Naming Book. Buy it now from Amazon | Barnes & Noble | IndieBound or click here to buy it directly from us and SAVE 60% on this book when you use code MARKET2021 through 4/24/21.
If you’ve chosen your business name, congratulations! What’s the next step? How do you formalize your name so you can start to work?
First, you’ll need to register your name with the state in which you’ll do business. But first, let’s clarify some vocabulary before moving on. Fair warning: What follows wades into some legal lingo. I’m not a lawyer. This should be taken as general information and guideposts, not legal advice. I recommend seeking the guidance of a lawyer throughout the process.
Copyright or Trademark
These two protections function similarly, in the sense that they both protect your intellectual property. They work a little differently, though. You’ll likely generate copyrightable material through the course of your business. If you write a book or a blog post, create a course, or design an image, those things can all be copyrighted. But your business name (or the title of your book, for that matter) cannot be.
For the protection of business names, we must look to trademarks. The U.S. Patent and Trademark Office (USPTO) defines a trademark in this way: “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” That gets us to the next distinction.
Trademark or Service Mark
The details here are a little in the weeds, but they might be important to you. A trademark protects companies selling a product. Nike and Budweiser are trademarks. A service mark protects a company providing a service. The store where you buy your Nike shoes or the bar where you buy your Budweiser beer will likely have a service mark. They’re providing you the service of selling you the product.
You’ve undoubtedly seen organizations use the ® symbol after their brand name. That’s for use once the USPTO has officially registered your trademark or service mark. While you’re waiting for that approval, you can use TM or SM to indicate that you intend to register.
To Trademark or Not to Trademark
That is the question. If you decide to trademark, you’re obligated to defend it. That will cost you both time and money (most often by hiring a lawyer). And yes, that time and money will be well-spent. There are famous cases of companies failing to enforce their trademarks and losing them. Here are a few examples:
- Escalator: Originally trademarked by the Otis Elevator Co. in 1900. Lost in 1950.
- Yo-yo: Trademarked in 1932. Thirty-three years later, a court ruled the trademark had been improperly registered.
- Zipper: Registered in 1925. Five years later, people were using the word so widely it had become a generic term, and the company lost the trademark.
In general, it’s a good idea to pursue a trademark. There are some competitive markets where trademarking is absolutely essential. If you know you want to trademark, or think you might, consult a trademark attorney.
You can also submit the name for trademark approval online. In order for the name to be registrable, the USPTO is looking for two things. One, the mark has to be unique. It can’t be spelled or pronounced the same as another registered trademark. If it’s similar to other trademarks, it goes to the next criterion: Is the similarly named company selling related goods or services?
“Related” doesn’t necessarily mean exactly the same. A consumer often buys milk and yogurt from the same company, for example. So, if your company makes yogurt, a milk manufacturer with a similar name would be considered related.
The USPTO offers some guidance on what qualities make for a strong name that’s more likely to be accepted. It has four categories to consider.
The first two are unregistrable:
- Generic. This would be like starting a bicycle company and trying to register the brand name Bicycle.
- Descriptive. This would be trying to register a name that explicitly describes the product, like Lightweight Bicycles.
The third and fourth categories are stronger and can be registered:
- Suggestive. If you wanted to suggest your company sells lightweight bikes, you might try to register the name Feather Bicycles.
- Fanciful/Arbitrary. The USPTO considers this to be the strongest category. Names here would be from made-up or blended categories; they’re new words or words that are totally out of context. Denim Bicycles might be a valid trademark because while “denim” is a common word, it’s out of context, or arbitrary, for a bicycle company.
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