15 Jan 2012

Yes, if your business name can be trademarked.

Trademark provides a powerful tool to protect the name and reputation of your business. It can harm you if another company or person begins using your name in connection with a product or service they sell.  This harm can come in two ways.

1. Their use of your name may overshadow your name, leaving potential customers to seek out this competitor for business rather than you.
2. Their product or service may be of poor quality causing the reputation behind your name to be harmed.

Trademarks are about both identity and reputation

Most people think of the first one—identity. They do not want their identity to be stolen by someone else. If they have a “Rocket Dog” hotdog stand, then they want folks coming to them when they want a “Rocket Dog”—not the hotdog vendor down the street who has begun using the name “Rocket Dog” too.

Reputation, however, is just as important. If the guy down the street using “Rocket Dog” as well has a really, really bad hotdog, then the reputation of “Rocket Dogs” will be harmed. If folks gt sick on his “Rocket Dogs,” then they won’t want your “Rocket Dogs.”

Owning a federally registered trademark allows you to stop someone else from using that trademark. In the example above, you could sue to stop your competitor from using the “Rocket Dog” mark, thus protecting your identity and your product’s reputation.

Not everything can be trademarked

Protecting your identity and reputation with a trademark sounds great, but not everything can become a federally registered trademark.

For example, someone can’t trademark the word car and then sue anyone who calls their car, well, a car. Car is too generic for trademark protection.

The four categories of trademark distinctiveness

U.S. law breaks trademarks into four categories of distinctiveness in order to determine whether they can be registered as a federal trademark.  These categories, in order of least likely to be registered to most likely, are as follows:

1. Generic
2. Descriptive
3. Suggestive
4. Fanciful or Abritrary

Generic marks describe the general category of the underlying product or service. Car obviously falls under the generic category. Generic trademarks cannot be registered.

Descriptive marks directly describe an underlying quality or characteristic of the underlying product or service.  Holiday Inn is an example of a descriptive mark. The words in the mark are descriptive of the underlying services provided—hotel rooms. Descriptive marks may be registered, but the person seeking the trademark has to show that something called “secondary meaning” has attached to the trademark. Secondary meaning is when someone thinks of the trademark owner when they think of the mark, rather than something else. In Holiday Inn’s case, do you think of an inn you go to on holidays when someone says Holiday Inn, or do you think of the chain of hotel called Holiday Inn? (I think of the chain myself.)

Suggestive marks may be registered without showing secondary meaning. Suggestive marks suggest the underlying service or product being sold, but it requires an imaginative step to be made by the consumer. Whereas Holiday Inn directly references inns, something such as BluRay or Coppertone suggests the product without directly references it. BluRay uses a blue laser (or ray) on its discs, whereas Coppertone helps you tan in the sun without being hurt, thus turning a copper tone.

Fanciful or arbitrary marks are the most distinct and easiest to register. A fanciful or arbitrary mark bears now relation to the underlying product or service provided.  Some examples include Exxon for gas, Apple for computers, and Comet for housecleaners.

To learn more about trademark law, here is a great overview of trademark law.

How do I know which category my trademark falls under?

You should consult with a trademark attorney. We register trademarks for our clients and would be happy to discuss your trademark questions with you.

The simple fact is that, while many business names can be trademarked, many more cannot. For example, my dry cleaners is called Professional Cleaners. There is an argument that this name would fall under the generic category. However, even if the name was not generic, it is at most descriptive. This would require my dry cleaners to show that when people think of “professional cleaners” they think of them, not something else. This is a difficult thing to do and probably not cost effective.

Do I have any rights to my business name if I can’t register it as a federal trademark?

Yes, every trademark has rights even if it is not a federally registered trademark. Someone cannot just take your business name without your permission and start using it for themselves. This is a violation of trademark law, and it is also unfair competition.

Stealing someone else’s name is a form of cheating—lying—that not only hurts you, but it hurts consumers. U.S. law does not allow this, and if something like this has happened to you then you should contact an attorney to discuss your litigation options.  (We litigate trademark cases and would be happy to discuss yours with you.)