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About

Jeremy with somebody else's dog.

 

Jeremy Peter Green Eche is a branding attorney and the founder of JPG Legal. He is the attorney of record for over 1,500 U.S. trademark registrations. In 2019, JPG Legal was ranked the #16 law firm in the United States by number of federal trademark applications filed. Eche graduated from Northwestern University School of Law on a full scholarship.

 

Eche has been profiled on USA Today, CNBC, CNN Money, NPR's Morning Edition, WIRED, MSNBC, the New York Daily News, HLN, CNN Politics, DCist, Vox.com, CNET, Mic.com, NBC News, Refinery29, the Globe and Mail, and several other news sources. He is best known for owning ClintonKaine.com and hosting his comics there during the 2016 election, before selling the domain.

 

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Eche is based in DUMBO, Brooklyn in New York City. He formerly served as in-house General Counsel for Teamsters Local 922 in Washington, DC. He is married to Stephanie Eche, an artist and creative consultant.

 

You can contact him at info@jpglegal.com.

How to Come up with a Brand Name: a Lawyer’s Advice


Green and purple registered trademark (®) symbol cartoon representing how to come up with a brand name, signed by Jeremy Eche.

You may not be surprised to learn that clients frequently ask me how to come up with a brand name that they can successfully register as a trademark. Sometimes they ask after we give them a negative legal opinion about the name they had already chosen. Other times they ask after they get a major refusal from the USPTO and have to go back to the drawing board. 

Over the years, I refined and augmented my answer to this question until it grew into a semi-comprehensive guide. In this post I will:

  1. Go over some trademark basics to keep in mind when coming up with a name for your business.
  2. Discuss additional naming factors entrepreneurs should consider, beyond conventional trademark law.
  3. Tell you what strategies I use when trying to think of a new brand name, especially if I’m having trouble thinking of anything.
  4. Explain how to do a very basic trademark search on your brand name idea before you start investing time and money into it.

What is a Trademark, Exactly? Is a Brand Name a Trademark?

I’m sometimes going to use words like “trademark,” “mark,” and “brand name” interchangeably in this article because they often refer to the same thing. A trademark is a mark that someone is using in trade to identify a source of goods or services. In other words, it’s a brand identifier. Brand names are one type of trademark/mark. 

You start accruing limited “common law” trademark rights for a brand name as soon as you begin to offer goods or services under that name. However, securing a federal trademark registration with the USPTO gives such massive legal and practical benefits that most businesses should avoid settling on a name until an attorney has told them they’re likely to be able to successfully register it as a trademark. They should then file their trademark application as soon as possible. 

Registering your brand name as a trademark at the federal level gives you presumed rights to that name in all U.S. states and territories. With that said, some trademarks are inherently “stronger” than others, giving them a broader scope of protection. A savvy entrepreneur should look beyond the registered vs. not-registered binary. Your goal should be to pick a brand name that will result in a strong trademark registration.

What Is a “Good” Trademark?

In order to understand why some trademarks are considered strong and others are considered weak, you need to understand the spectrum of distinctiveness. Every class I took in law school that even touched on trademarks covered this spectrum. Your brand name and the individual words in it have a certain level of inherent distinctiveness just based on how much your brand name relates to the goods or services you offer. From most distinctive to least distinctive, your trademark can be considered:

  1. Fanciful
  2. Arbitrary
  3. Suggestive
  4. Descriptive
  5. Generic

A good trademark lawyer can tell you roughly where you fall on this spectrum without performing any search. The more inherently distinctive your mark is, the better. Fanciful, arbitrary, and suggestive marks can all be registered as trademarks. If your mark is definitely descriptive or generic, you’ll probably want to come up with a different brand name before your lawyer wastes time performing a trademark search. I’ll go into a little more detail below.

Fanciful and arbitrary marks

The best brand names, from a trademark perspective, consist of words like VERIZON or ZILLOW (fanciful trademarks). The next best are names that have nothing to do with your industry, like PENGUIN for books (arbitrary trademarks).

Fanciful and arbitrary names have the double benefit of being easier to run conflict checks on, and having a broader scope of protection if you reach registration for them. If you like the name PENGUIN for books, you essentially just figure out if somebody else owns a trademark containing the word “penguin” for books or related goods/services. If you reach registration for that name, you can feel pretty secure knowing that you’d have a great legal case against somebody else in your industry using the word “penguin” in their brand name.

Suggestive marks

Naming your brand something that is “suggestive” of a feature of your products without directly describing it is also acceptable, but can be harder to give a legal opinion on, and to protect, than something arbitrary or fanciful. An example of a suggestive trademark would be something like STRONGPLAY for athletic equipment. 

I would have a very difficult time giving a legal opinion on STRONGPLAY. It contains two words that are very commonly used in the athletic equipment industry. If we’re really unlucky, a USPTO trademark examiner might refuse it based on a likelihood of confusion with an existing trademark that contains “strong” or “play.” This shouldn’t happen because both of these words are used so commonly in this industry, but in other cases it won’t be as easy to tell.

A more likely danger is the existence of a trademark registration using a similar pair of terms like STRONGESTPLAY or STRONGPLAYER. The trademark application’s outcome in this situation could easily come down to how harsh our randomly assigned USPTO examining attorney is. Or simply how they’re feeling that day. This is in addition to the usual dangers like phonetic equivalents; trademarks that sound almost the same as each other. A registration for STRUNGPLAY or STRONG PLEY for the same goods would probably result in a refusal. 

Merely descriptive marks

You should avoid marks that are “merely descriptive” of a feature of your goods/services, of your company, or of your intended consumers. If every word in your brand name is merely descriptive, the brand name will not be protectable except under certain circumstances. This means you will probably not reach registration on the Principal Register of trademarks.

An example of a merely descriptive brand name would be MEN’S HAIRSHAVE COMPANY for a razor brand. Somebody with that brand name would have to be the only company using that trademark for several years before they could even attempt to establish any trademark rights for it. If you applied for this name, you’d be lucky to even get onto the Supplemental Register, let alone the Principal Register.

The Supplemental Register is where some descriptive trademarks are allowed to be registered until they’ve acquired distinctiveness over time. Supplemental Register trademarks have much weaker protection. Platforms like Amazon and Google generally don’t let you use them to enforce your trademark rights against infringers.

Deceptively “mis-descriptive” marks

Another danger is using words that don’t describe your product, but could describe the products of your competitors. For example, if you sell only black nail polish under the name RED NAIL POLISH COMPANY, you can still get a refusal for being merely descriptive. Or worse, you might get a refusal for being “deceptively mis-descriptive.” This means your brand name misleads consumers about your product, and is ineligible even for the Supplemental Register.

Generic Marks

You should never pick a generic term as your brand name. Generic terms are words or phrases that consumers recognize as simply a name for a product. Examples of generic terms are PET FOOD and POTATO SACK. Unless, of course, these terms are being used in completely unrelated industries, as with the fore-mentioned APPLE for computers. POTATO SACK is a good trademark for selling computers, but it’s a bad trademark for selling potato sacks (or potatoes). If your brand name is a generic term in your industry, it can never be registered as a trademark, nor protected against infringement.

“Random” Names are Better than Relevant Names

In summary, the less your brand name has to do with your industry, the easier it will be to protect as a trademark. It will be easier to register, easier to enforce against infringers, and usually it’s better for branding as well. This is, of course, assuming somebody else in your industry isn’t already using a similar name.

This seems counterintuitive to a lot of my clients. They really want to call their high speed internet service LAGFREE or WIFICONNECT or something else that spells out what the product does. They ask, “How will customers know what our product is if the name doesn’t spell it out?”

But you can tell customers what your product is without sacrificing trademark strength. You can always just use a combination of distinctive words and descriptive/generic words. As long as you have one distinctive word in your trademark, such as VERIZON, you can have a descriptive/generic word such as WIRELESS or PHONES in there as well. Better yet, instead of registering VERIZON WIRELESS, you can just register VERIZON and then call your wireless internet service “Verizon® Wireless” in your branding. You’re allowed to do that.

It also makes sense from a business perspective to avoid names that relate to your product. Why limit yourself when you don’t have to? In a few years you may want to branch out into other products that you haven’t even envisioned yet. 

Colgate: A great “random” brand name

One of the first products Colgate sold was candles, decades before they started selling toothpaste. Imagine if the founder had named the company “Slow-Burn” or “LardWax.” Would you want to see those names on the packaging for something you plan to stick in your mouth? Fortunately for William Colgate, his last name had no real meaning and thus could be used to sell any product. As a result, he and his descendants never had to change their brand name.

Suggestive Names Can Be Good If They Don’t Limit You

Your name doesn’t have to be totally random, of course. It can vaguely suggest something about your product without having any obvious connection to your industry or product. “Google” is a great example of a name that might be considered by courts to be an arbitrary name, but in the minds of the founders it was suggestive. Being a misspelling of “googol” (an unfathomably high number), it hints at the huge capacity of their search engine. Now Google is a giant in many industries and their name functions perfectly well in all of them. 

The More Unusual Your Name, the Better

ZenPayroll: A terrible name choice

Contrast Google with ZenPayroll, a payroll software startup that had to change its name to Gusto when its management realized they also wanted to provide employee benefits services. Their initial mistake of picking such a specific, descriptive name meant they couldn’t even branch out into complementary services without going through the huge hassle of a name changes several years after the ZenPayroll’s founding.

Not only was the “Payroll” portion of their name too specific, but the “Zen” portion of their name was so common that it was already being used by a major employee benefits company. The other company is Zenefits, which also expanded from benefits into payroll, making it a mirror image of ZenPayroll. “Zenefits” isn’t an amazing name either, but at least it’s a “made-up” word.

ZenPayroll’s failure demonstrates that just because you can successfully register your chosen name as a trademark doesn’t mean you should use that name. First, the descriptiveness of the second word in their name limited their ability to branch out to other product categories. Second, the lack of originality in their name choice ensured future trademark conflicts as soon as they expanded their scope of products. 

Apple: Arbitrary, but not weird

Many trademark attorneys seem to disagree with me about this, but my opinion is that Apple didn’t choose an ideal name. Yes, their name is considered the textbook example of a strong, arbitrary name; I actually learned about it in law school. They picked a word that had nothing to do with their products, giving them very strong protection for that word in their industry. 

However, once they started expanding out of the computer field, they found that companies already owned the word “apple” in many other industries. It’s a very common word, used regularly in conversation, so a lot of business owners put it in their brand names. Apple eventually expanded into music and had to fight the Beatles’ record company, Apple Records, on and off for decades. 

This is a nightmare scenario for a big company: bumping into another big company with the same name that has an endless legal budget and a valid reason to keep you out of their industry. Apple (Computers) racked up massive legal bills and eventually ended up buying the rights to the word “Apple” for music for a reported $500 million.

Google is better than Apple

It’s obviously much better to be in Google’s position, where they chose such an unusual name that they were not only able to reach registration easily, but they also had a clear path to expand into other industries without having to fight anybody over it. On top of that, when you pick a name as distinctive as Google, you’re also entitled to much broader, stronger trademark protection than for a name like Apple. 

It makes sense: Google is such an unusual name that if most consumers saw a medical company or a candy company or a restaurant with the word “Google” in its branding, they would wonder if these products were affiliated with Google in some way, despite Google not being known for medical services, candy, or restaurants. This is not true for a name like “Apple,” even in industries where “apple” isn’t a descriptive word. There were likely thousands of businesses in the U.S. that already had the word “Apple” in their name when Apple started selling computers, and thousands more have probably been created since then, in almost every industry imaginable, because it’s a very common word and thus a common name element.

An arbitrary name become descriptive when a company expands enough

Not only might your name be used in many brand names because it’s a common word, but your supposedly arbitrary name may actually be descriptive, generic, or highly suggestive in an industry that you eventually expand into, even if you never originally planned to. “Apple” is arbitrary in the computer industry, but it’s highly suggestive and common in the health industry. For some reason people think of health when they think of apples. “Apple” is also a generic word for a product in the food and restaurant industries.

Product photo of Apple Watch with slogan, "The future of health is on your wrist. From $399."
Do you think Apple knew in 1976 that they would be a health company? Picture by Apple, Inc.

I myself had a client in the health coaching industry get approved by the USPTO for a mark with “Apple” in it, only to have Apple oppose the application. They didn’t want consumers to confuse my client’s services with the health-monitoring software that comes on iPhones and Apple Watches. Imagine how many hundreds of small businesses Apple must send threatening letters to every year in cases like this. That’s both expensive and bad for building goodwill among potential consumers.

The whole point of protecting a trademark in the first place is to build consumer goodwill toward your brand name. Ironically, the more Apple feels it has to protect its brand name, the more it harms its brand name. Google has avoided this headache altogether.

Look very, very far ahead when coming up with your company’s name

In short, an ambitious entrepreneur with an eye for the distant future—decades after the company’s founding, when it may have crossed into seemingly unrelated industries—will pick a name that not only has nothing to do with the company’s current offerings, but that also does not exist and is unlikely ever to exist by coincidence in any other industry. The new company’s name should not be descriptive or generic in other industries, nor should it be a common enough word that founders in other industries will use it in their naming, causing consumers to see the name in other industries and assume it’s not your company because of how common the word is. 

Google is an example of this ideal sort of name. Vornado is another one. The name “Vornado” is used by two separate large companies: a real estate developer and an electric fan maker. The name is so unusual that a typical consumer may suspect it’s not a coincidence, and they’ll be correct. The two Vornados used to be one company until it split into two companies several decades ago.

Imagine how strong a company’s trademark rights are when consumers are likely to think that any product with the same name is probably made by the same company, no matter how unrelated the products are. This kind of consumer impression gives tremendous power to a company, both in practical marketing terms and in the legal arena. If Vornado were still one unified company, it would be able to expand into any industry with minimal hassle.

Where to Look for Ideas for New Brand Names

Domain name marketplaces are a great place to start

If you’re having trouble coming up with a name, one method I’ve found helpful is going to a domain listing website, like the domain marketplace hosted by JPG Legal, and looking at what domain names are available. You can look at “all names” if you want a fanciful or arbitrary name, or you can look “by category” if you want a suggestive name.

Don’t buy the domain name until you’ve had a lawyer evaluate that brand name. Buying a domain name does not actually give you the right to use that name. Many domain name marketplaces incorrectly call themselves “brand name marketplaces.” What you’re buying from them is not a brand name; there’s a good chance that you won’t be able to use that domain name in your industry because of trademark issues.

Research your trademark yourself before hiring a lawyer

Once you’ve come up with a name that seems distinctive, I recommend that you perform your own preliminary search. Use the USPTO’s basic word mark search feature as well as a quick Google search. See if anybody seems to be using the name in your industry. If you see a registered trademark that’s kind of similar to yours in the USPTO database, look at the goods/services. If the products might be considered related to yours, put yourself in the shoes of that other company. Would your proposed trademark make you angry if you were them? If the answer is yes, then you should probably abandon that name. Once you’ve performed this search and haven’t found any dealbreakers, you’re ready to get a legal opinion from a lawyer.

Just buy an existing trademark on Communer

If you want to skip the risk and waiting involved in applying for a trademark, you can also browse registered trademarks for sale on Communer. Communer is a new marketplace I developed where people can buy and sell registered trademarks.

The sellers on Communer are usually just trying to recoup their costs from failed or rebranded business projects. This means the registered trademarks for sale on Communer aren’t much more expensive than having a lawyer research and register a new trademark. When you factor in the potential cost of having to rebrand after your initial trademark application is rejected, purchasing an already-registered trademark looks like a great investment.

Don’t get too attached to your first choice of brand name

Be prepared to abandon a name that you may have grown attached to. There’s a good chance that your lawyer will tell you it’s not viable, even after you’ve done your own search. You may have a hard time imagining the future with a different brand name, but trust me: once you get your mind ready to accept a new name, it becomes very easy to switch gears. It’s a lot like jumping into a pool or ripping a bandage off.

Above all, don’t be lazy about choosing a brand name

No matter how you approach the choosing of a name, please put some time and thought into it. If you’re not buying an existing trademark registration, please get a lawyer’s opinion on whether you’ll be able to trademark the name. Do this before you buy a domain name and start slapping your name on products. This small investment of time and money can help you avoid tremendous problems in the future that will be expensive at best and existential at worst.


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