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Small Business Center

9 Tips for Naming and Trademarking Your Small Business

November 29, 2022

William Shakespeare famously asked “What’s in a name?” and more than 400 years later, the question holds up, especially for entrepreneurs looking to start a business. The name of your business is the first thing your customers learn about you. It sets you apart from competitors; it’s the linchpin of your identity and how people find you online, on the freeway and on social media. Good names sum up your company; they let customers know your take on things, and they’re easy to remember.

It’s imperative for entrepreneurs to do everything they can to protect their businesses’ names; including registering them for trademark protection with the U.S. Patent and Trademark Office. Among other things, trademarks “create a public record of your ownership, prevent others from choosing names that are too close to yours and give you more cost-effective tools to defend your rights if someone infringes on your name,” said trademark attorney Suzann Moskowitz, owner and founder of The Moskowitz Firm. “It's like having a security alarm and an insurance policy,” she added. It’s a way to ensure the protection of your brand.

Skipping trademark application can come back to hurt you, as ice cream brand Dreyer’s learned the hard way. William Dreyer started making ice cream in California in the 1920s, around the same time William Breyer started making and selling ice cream in Pennsylvania. The two found themselves competing in the same market in the ’80s, and Breyers, which had a trademark for its name, went after Dreyer’s, which did not. As part of the resulting agreement, Dreyer’s had to change its name to Edy’s Ice Cream in locations east of the Rockies to avoid, as Moskowitz said, “customer confusion.”

This never would’ve happened if Dreyer’s had applied for a trademark when the company began. So how do you come up with a strong name that will resonate with customers and then ensure the name is protected by law?

1. Start with an open mind. A common problem in the trademark business is that an entrepreneur falls in love with a specific name, only to find it’s already taken or is too similar to the name of a pre-existing, related business. In that case, it can’t easily be trademarked. To avoid heartbreak, Moskowitz said, start with an open mind when it comes to naming your business and have a list of multiple potential names in your pocket.

2. Consider arbitrary names. When brainstorming, think about names that are unrelated to the product you’re selling. They can be real words used out of context — think Apple for technology or Amazon for an online retailer — or invented words that don’t mean anything to customers yet — think Kodak or Haagen-Dazs. Arbitrary names tend to be the strongest for purposes of trademark enforcement and the easiest to trademark, Moskowitz said. Not sure where to start? Crack open a book or dictionary and write down the words that jump out at you.

3. Avoid generic names. Literal descriptions of your service are the hardest to trademark. “Names like Vegan Pizza and even Chicago Pizza would be entitled to a very, very low level of protection, if any,” Moskowitz said. Such names also don’t distinguish you from your competition or tell a story about your business. It’s OK, Moskowitz said, to have the word “pizza” in your name, but you’re never going to have an exclusivity if your name doesn’t extend beyond a simple description.

4. Think of suggestive words that evoke an emotion or describe the product you’re selling. Using suggestive adjectives like Crusty to describe a pizza restaurant or Toss’d to describe a salad place tells the customer a story about the product that company is selling. It also brings to mind a feeling for the customer, and emotions connect strongly to buyer behavior. Suggestive words also are entitled to stronger trademark protection, Moskowitz said. Hot tip: When brainstorming names, think about what you want your customers to feel or think about when using your services.

5. Keep it simple. You want a name that’s easy to pronounce and easy to remember. You also, as Moskowitz said, “don’t want to go with some crazy spelling that’s going to be really hard to put in a domain name or limits people from finding you.” Many of the most successful brands are only one word. Think Microsoft or IBM or Amazon.

6. Do some digging. Once you have a few names you’re happy with, search to see if there are other businesses with similar names out there. You can start with a simple Google search for a 10,000-foot overview and explore the USPTO’s Trademark Electronic Search System database of registered names. Don’t forget to look for variations and not just exact matches. Moskowitz suggested looking at domain name and corporate name availability but cautioned that neither is a good indicator of whether there is an actual trademark conflict. For an extra level of security, hire a trademark attorney for a risk assessment on the names you’re considering. “It’s absolutely worthwhile to do the first layer of research on your own,” Moskowitz said. “But hiring an experienced attorney may save you money in the long run because we have better search tools and understand what can be worked around versus what’s an actual nonstarter.”

7. Prepare and submit your application. To access the Trademark Electronic Application System, you need to log in to a uspto.gov account. You can set up a uspto.gov account here and then file the application online through TEAS. When filing, decide which specific goods or services you’re trying to protect under your trademark. The USPTO divides trademarks into dozens of classes. Some are for products — meaning physical items consumers purchase from you like T-shirts in Class 25, pizza in Class 30 and shampoo in Class 3 — and some are for services, meaning activities you perform for other people like a beauty salon in Class 44 or a restaurant in Class 43. Some businesses, such as restaurants that also sell T-shirts and prepackaged baked goods, might be eligible for multiple classes. But, Moskowitz said, just because you’re eligible for multiple classes does not mean you should file for them all. Extra cost aside, you don’t want your application for a cafe, for instance, to receive an initial refusal because you also threw in the class for promotional shirts and an entrepreneur in Idaho with a similar name happens happens to sell sweatshirts out of their basement.

So, with filing fees starting at $250 per class, how should you decide which class to file in? “Besides prioritizing your key goods and services, you can use the insights you gain from a risk assessment search report to decide which classes you'll have the best luck in,” Moskowitz said. Again, if your budget allows, a trademark attorney can help you best determine which class or classes you are eligible for and which would have the greatest chance of success. In general, though, Moskowitz advised entrepreneurs who are on a budget to “start small and choose your top priority. As you grow, you can file more classes and variations, including logos, but first, get your foot in the door.”

Once you’ve submitted your application, you will receive a confirmation receipt from the USPTO and a serial number to check the status of your application in the Trademark Status & Document Retrieval portal.

8. Move forward, but cautiously. It can take more than six months to hear back from the trademark office and over a year to finalize a registration. And in a weird chicken/egg situation, you can’t actually get your trademark finalized until you start selling something, Moskowitz said. It can be pretty scary to make a big brand investment in your business before you have final approval. Moskowitz offered two pieces of advice for the wait:

  • Make sure that any insurance you get includes provisions for intellectual property in case something unexpected happens.
  • Move forward, but cautiously. Don’t invest huge money in packaging and branding until you get the official trademark approval. Consider starting with a soft launch.

9. Breathe. Once you receive your trademark — congratulations! — you have five years before you need to fill out any other maintenance documents. And after you pass that one-time check-in, you just need to remember to renew your trademark every 10 years, so mark your calendars.

In the meantime, feel proud and confident. Once the approval arrives, you can feel free to invest heavily in your branding and let the world “officially!” know your name and get acquainted with you.

For proof of trademark, you can view, download and print a copy of your certificate for free.

By Rebecca Meiser

Contributor, Commerce + Communities Today

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