It happens all the time. Once the business idea is set, coming up with a name is no small task. The challenge to visually stand out, and to also have a name that’s catchy, and adopt a name that will suit the brand through growth expansion. Here are five things to remember when picking a strong trademark.
It’s tempting to use the name that best describes you or what you’re selling. “Orlando Lawyer,” “Jamaican Cuisine,” and “Fitness Pro” are all impressive, but neither can be used exclusively. Exclusive use is the main goal of trademark ownership. If there’s ever a time to be random, it’s during the brand naming process. Firestone, Apple, Microsoft, and Amazon are strong brands in part because their names are arbitrary and more easily protected. It makes sense that accidental infringement occurs when brand owners use descriptive names because others who sell the same products or services use the same descriptors.
Less is More.
Whether to use the logo in the trademark application or not to use the logo is the question. You’ve had the perfect logo designed for your project, and it only makes sense that you’d want to file the logo in the trademark application for your exclusive use. However, by filing the logo in the trademark application, the words within the logo are protected with the design. In other words, the trademark has broader protection without the added design element.
Trademark applications are filed by classification. In other words, there is a number assigned to your products or services. Your initial business might be for restaurant services, but will the workers wear uniforms with the business name or logo and will you sell shirts to your patrons? If so, rather than protect the mark for one classification (food services), perhaps the restaurant will launch its own T-shirt line to promote the brand through loyal patrons. Applying for a second class is appropriate to accommodate business growth.
Unless you designed your own logo, you need a written assignment of the copyright from the designer. Even then, conduct a due diligence search on the design to be sure there are no conflicts. The trademark registration will give you the exclusive right to use the logo in association with your products and services, but the copyright ownership is key, too. Copyright owners (i.e., the designers) have their own set of exclusive rights. The designer who still owns the artwork may still rightfully display it, sell it, and distribute it. Clear the title and save your receipts. This is a part of positioning yourself to win.
Spell Check is Overrated.
One of the biggest misconceptions about trademarks is that the spelling matters. It doesn’t. If the name you chose sounds like a name for a similar brand or appears the same without careful study, it’s likely not going to be cleared for registration. Making a word plural, changing vowels, and adding extra consonants will not change an infringing name to a non-infringing name.
While these are five important things to consider, having an intellectual property attorney’s guidance can save business owners time, resources, and reputational damage.
Kimra Major-Morris is a top rated intellectual property attorney licensed to practice in Florida and the United States Middle District of Florida. Her firm, Major-Morris Law, LLC is located in Central Florida representing international trademark brand owners and talent, and advocating for the registration, enforcement, and monetization of their copyrights and trademarks. She is an award-winning author on the subject of intellectual property law and a national speaker on the copyright and trademark issues.
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