Blogging Business IP Legal
Naming your blog or business – A trademark perspective
April 3, 2015
1

Sounding cool isn't always enough

When naming your blog or business, there are naturally many considerations that go into the choice. While having a cool name is often the top priority, there are some legal issues that should be taken into consideration.

I’ve talked about trademark law in general before, but let’s look at how it impacts (or should impact) an entrepreneur’s naming process.

Don’t start with one idea

Entrepreneurs and bloggers starting a new business should brainstorm a LIST of names, not just come up with one. If that one name you fall in love with is already taken, you’re going to have difficulty letting go (but you should).

It’s important to have numerous ideas to fall back on after the legal analysis is complete. Each step of the analysis may end up knocking out any of the proposed names, so it may be necessary to get rid of your favorites. This is just part of the process, and the quicker you accept it, the better.

If that one name you fall in love with is already taken, you’re going to have difficulty letting go (but you should).

Distinctiveness is key

Trademark strength comes from the level of distinctiveness in the mark when compared to the product that’s being sold. This means that the more distinct the brand name is, the stronger the mark. Let’s look at a couple examples:

  • Apple computer – yes, it’s just a regular word, but the brand name is very distinct from the product they sell (apples versus computers). This makes for a strong and distinctive trademark (called an “arbitrary” mark by lawyers).
  • Exxon – this is a made-up word, distinct from other brands. This makes it a very strong mark (called a “fanciful” mark by lawyers).

On the other hand, there’s something like Beef & Brew for a restaurant. This mark simply describes the thing that the brand represents.

In cases of descriptive trademarks, you would need to develop a meaningful connection between the product and the brand name in the eyes of the public before it can be registered. We call this “secondary meaning,” and it takes time and effort to do. These marks should be avoided, if possible.

This is the first line of analysis when a lawyer looks at potential trademarks. The next is called a “knock-out” search.

Knock out that search!

When I get a client’s list of trademarks, I run them through a knock-out search. This consists of checking a few major search engines for both exact and close matches. If a match is found, you “knock it out” of the list.

Of course, that match would have to be one that would be in the same “class” of goods – meaning they are similar products and use similar marketing channels (among other things).

This is where the value of an attorney comes in – clients often have a very myopic view of what could potentially get them in trouble or confuse consumers. It’s not a dig on the clients, just the reality of the situation, particularly when they are really dead-set on a particular name.

This is where the value of an attorney comes in – clients often have a very myopic view of what could potentially get them in trouble or confuse consumers.

It’s important to check for obvious singular and plural versions of the proposed name, along with misspellings and sound-alike versions. All of these could be found infringing.

To go further, there are companies that do more extensive trademark searches. They look at the federal registry, all of the state trademark registries and other search engines. This is kind of the last step before moving forward with a final brand name. While it costs a few hundred dollars, the cost can be well worth it if you’re going to be putting a lot of time and money into your brand name.

Hopefully this has been helpful to new bloggers and business owners. It’s always a good idea to think of the potential legal issues that come with a new business, before they end up getting you in big trouble.

About author

Zachary Strebeck

I'm a solo practice lawyer and full-time digital nomad. I run my law practice at www.strebecklaw.com, representing Internet, mobile software and gaming entrepreneurs. I also blog about digital nomad travel at A Lawyer Abroad.

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