So, you’re picking out a business name.
You want to pick one that can be protected by trademark laws.
But when it comes to trademarks, not all business names can be protected. What do I mean?
Let’s back up.
If you’re trying to decide on a business name, you’ve got a lot to think about. You want to make sure it’s a good business name within your industry. You want to make sure it’s available. And—even though you probably don’t need to worry about trademarks at the outset—you want to set up your business for trademark protection down the road.
When it comes to trademarks, not all names are created equally. The strength of a trademark depends on how “distinctive” it is. What do I mean? Let’s dive into it.
The five distinctive categories of trademarks
Generic. If your business name is the common name for the good or service you’re providing, then it’s generic. In other words, the term is generic if “you’re calling it what it is.”
Descriptive. If your business name directly relates to the good or service you’re providing, then it’s descriptive.
Suggestive. If your business name says something about your business without describing the business, it’s suggestive. Some imagination is needed to connect your name to what you do.
Arbitrary. If your business name doesn’t relate to your business at all. If you just went off the dictionary definitions of this word or phrase, it wouldn’t say anything about your business.
Fanciful. If your business name is a made-up word, it’s fanciful.
Confused yet? Let’s use an example: our law firm.
Our law firm recently decided to change its name to Indie Law. For a while, we were using “Indie Creative Law.” There were a lot of contenders when we were thinking about a new name. Here are some of those names (mostly made up for the purposes of this post):
- The Law Firm
- Artsy Law
- Indie Creative Law
- Imagine Law
- Culaccino Law (Italian for “mark left on a table by a cold glass,” like a watermark. Beautiful, right?!)
How would these names stack up with those “distinctive” categories above? Well, these categories make up a spectrum of distinctiveness, and the names would fall under the spectrum like this.
Let’s break this down.
“The Law Firm” is a generic mark. It’s not descriptive or anything. It just says what it is. Generic names CANNOT be trademarked. That’s why it’s in red.
“Artsy Law” is a descriptive mark. It describes the kind of law firm it is: it’s a law firm specifically catered to creatives and artists. Descriptive names CAN be trademarked, but it’s difficult to do so. You have to develop a “secondary meaning” for your business name, meaning you have to show that people think specifically about your business when they hear that name, and not just a description of a business. This gets complicated, and I won’t get us bogged down in the details. Just know this. Having a descriptive business name can be dangerous—if it’s ever deserving of trademark protection, it can take you years to be able to build that argument. That’s why it’s in yellow.
Let’s hold off on “Indie Creative Law” for a moment—we’ll get back to it.
“Imagine Law” is suggestive. It doesn’t really describe the business. But if you know that our firm helps creative businesses, then the word “imagine” makes sense. It doesn’t tell you what we do, but it gives you a glimpse of it. “Culaccino Law” is arbitrary. It translates to “watermark,” which has nothing to do with what my firm does. But the word itself, or at least a translation of the word, does exist. “Tribop” is fanciful. It’s a completely made-up word (at least last time I checked). Tribop would be the strongest trademark here, but ALL of these would get strong trademark protection without having to worry about a secondary meaning or anything. That’s why they’re in green.
So what’s the deal with “Indie Creative Law“? Here’s where it gets complicated, and this complication is important to understand. The line between what’s descriptive and what’s suggestive is a blurry one (as is illustrated by my fabulous design work in the image above). Sometimes it requires a court to get involved to really answer what’s descriptive and what’s suggestive. I’d argue that Indie Creative Law is suggestive because I don’t think the phrase “describes” what the business does to the general population. It gives off more of a feel than a description. But since lines blur easily here, it’s hard to say for certain.
Having a descriptive business name isn’t always a bad thing. If it’s descriptive, then your customers will have a better understanding of what you do. And since trademark protections are weaker for descriptive trademarks, you don’t have to worry AS MUCH about a competing business claiming trademark ownership in the name. But be careful: having a descriptive name does put you at risk, and you should consider applying for trademark protection when possible if you want to protect your brand in the long term.
The bottom line
When you’re thinking about your business name, you want to keep trademarks in mind. It might make sense not to register for a trademark right away (in fact, it probably doesn’t), but you do want to make sure that you choose a name that CAN receive trademark protection in the future.
At the same time, think about your customers. In most cases, it’s helpful when your audience has a sense of what you do after hearing or seeing your business name.
So, think about that distinctiveness spectrum. Pick something suggestive. If it’s generic, you’ll never get trademark protections. If it’s descriptive, you’ll have an uphill battle to earn trademark status. And on the other hand, if it’s arbitrary or fanciful, you’ll have a hard time building a following that understands what your business does.
Picking a suggestive business name is easier said than done. Especially when it comes to that blurry line between distinctive and suggestive marks. If you’d like help deciding whether a business name would be designated as distinctive or suggestive, let us know. We’d be happy to help.