So, you’ve chosen a product and made it stand out. You’ve chosen a good, catchy name for your product (a combination of your children’s names!). From your searches on Google, it looks like the brand name is available for use. But then, when you finally decide to register “your” brand name as a trademark, it turns out that the name is unregisterable. It seems it’s already in use, or is considered “too generic.” If you have no trademark, you are ineligible for Brand Registry, and Amazon won’t protect your brand. So, what can be done? Generally you’ll rebrand, choosing a different name, which you can then protect by registering as a trademark.
It’s a disheartening situation, and not uncommon, I’m sorry to say. To prevent disappointment and the necessity to rebrand, we want to share two important tips with you; these will help you to choose a good brand name that can easily be trademarked:
- The most important rule is: don’t choose a name that directly describes your product! Trademark examiners will not permit a name that is descriptive of the product since, by law, no single person or entity can be granted a monopoly to use a term or expression that’s already established in that product’s market or field.
For example: the name “Great Carpet” is not a good brand name if you’re selling carpets and rugs, as it directly describes the product. If by chance you were to be granted a trademark for the name “Great Carpet”, no-one in the carpet industry would be able to use the expression “Great carpet”, which is a pretty important expression for anyone in that field! Therefore, the chances of a name like this getting past an examiner and achieving registration are low indeed.
On the other hand, the name “CARPET” is an excellent and original name if you’re selling cellphone covers, or picture frames… In the field of aviation, the name “American Airlines” would not be an easy name for an American airline to trademark, because it directly describes the product. In the same field, “EL AL” is an excellent name, because it only hints at the service the trademark owner provides, and is not immediately descriptive.
The name “Apple” is fantastic for computer products, but would prove very hard to trademark if you were a greengrocer… Having briefly viewed the world through the eyes of a trademark examiner, you have by now a pretty good impression of how this works.
Try to choose an original name, and one which is unconnected with your product/service or that at most hints at its nature without directly describing it… Think “NIKE” for sports products, or “LOGITECH” for keyboards…
You can also choose a name which includes the name of your product, but adds a unique extra word or words, a prefix and/or a suffix. For example, “ZEBRA CHARGERS” for cellphone chargers – you might be able to gain trademark protection for the unique combination of these two words.
- The second rule (really, this is no less important than the first!) is to choose a name that is available.
Visit the website of the US Patents and Trademarks Office (USPTO) and perform a search for the trademark name you’ve chosen. Here’s the link:
http://tmsearch.uspto.gov Select a search option: “Basic Word Mark Search”.
- If you’ve discovered that a trademark already exists with a very similar name, and in the same field (“class”) as your intended trademark- this may prevent registration of your intended trademark.
- It’s not enough to search for the exact name you’ve chosen. It’s important to perform a wide-ranging and exhaustive search which will bring to light similar names in your chosen field (“class”).
For example: If you’ve chosen to trademark “Dog Jump” for dog leashes, and a trademark “Jumping Dogs” already exists, registered for similar products, it’s fairly safe to assume that your request will be rejected on the grounds that it could be construed as misleadingly similar to the existing trademark. The average consumer might confuse the two trademark names, and the examiner might well refuse the registration of your trademark for this reason.
If you’ve chosen the name “SULU” for baby blankets, and found that the name “SULO” is registered already for baby sheets, there’s a strong possibility that you’ll run into problems in the registration process. It would be a shame to needlessly throw away your registration fees… And that’s why it’s important that your search be wide-ranging enough to include similar names.
- If you’ve found trademarks with the status “DEAD” – they are irrelevant.
- Likewise, if you’ve found a similar name that is registered for completely different types of services/products, this is also irrelevant (for example, you’re selling automobile accessories, and a similar name has been registered for medicines – not a problem!).
Hopefully these tips will set you on track to choose a successful name for your trademark!
Good luck 😊
 Descriptive names can be trademarked, if they can be proven to have earned a reputation. The name American Airlines, for example, was eventually trademarked, as a result both of its use over an extended period, and provision of evidence showing how “famous” the name was and how widespread its use had become.