Welcome back. If you’re following along, you have determined now that company names, as well as names for products, services, etc., are protected by trademark law. You also know that merely registering with the Secretary of State is not enough to protect your name. So how do you know if you have the right to use it?
The Trademark Search
A fun and exciting process called clearance searches. Fun for trademark attorneys, less so for everyone else probably. The purpose of a trademark search is to find existing trademarks to avoid “confusingly similar” trademarks, which are unregistrable. I thought the best way to explain this nuanced area of law would be to dispel a few myths. So let’s get started with Myth #3 in this four-part series.
Myth 3: I want my customers to know that we are Atlanta-area pizza shop, so I would like to register Buckhead Pizza Shop as a trademark.
No! This would be a huge waste of money in filing fees and a great example of why consulting with a trademark attorney can actually save you money in the long run. Trademark law guards against trademarks that are “merely descriptive” which means that the mark is too descriptive of the goods or services it is protecting. The issue with descriptive trademarks is that there is nothing unique about them to set them apart from other businesses that are named the same way.
If we think about the purpose behind trademark law, which is to identify the source of a good or service, it makes more sense as to why descriptive marks are not the best choice. How would a consumer know which Buckhead Pizza Shop is which, if they were all allowed to trademark the same name?
There is a better way. You see, the best trademarks from a brand protection perspective are those words that are made-up or have no meaning at all. These are called arbitrary and fanciful marks. Think of EXXON for gas. The word EXXON by itself doesn’t mean anything, but over time and the development of the brand, we universally know it to identify a gas company.
Now let’s say you thought of a fun, creative, and unique name for your new business. You even took it one step further and went to the USPTO’s website to conduct a search to see if it was available and didn’t see any results. Great, you can start using it right?
Not so fast. In my next post and last myth in this four-part series, I’ll discuss why a simple search on the USPTO website is nowhere near enough to ensure that a trademark is available.