How to protect your name and avoid infringement.

Trademark law is confusing, even for many lawyers. Yet your trademark is likely among your most valuable assets. Think about how hard it would be to run your business if you couldn’t stop other people from using your business name.

Let’s look at trademark law from both the offensive and the defensive angles.

Offensive

It is critical that you pick a business name that you can protect using trademark law—meaning you can obtain a federal trademark with the United States Patent and Trademark Office (USPTO) and stop other people from using your mark.

From a marketing perspective, descriptive names are often good because they help consumers understand what you sell. However, from a trademark perspective, arbitrary names are better because they are easier to protect.

For example, while you can operate a business under the name “BBQ Restaurant,” you can’t protect that name because it merely describes what you sell. However, if you picked an arbitrary name like “Green Sky BBQ,” you could likely obtain a trademark and prevent other businesses from using the mark “Green Sky” (and anything confusingly similar) in their restaurant’s name.

Defensive

In addition to picking a name you can protect, you need to pick a name that is not already in use by an existing business in your industry.

For example, if you open Green Sky BBQ in 2015 and you later learn that someone else already had a federal trademark on “Green Sky” in connection to a restaurant, they can force you to stop using your name. You also will have to change all your marketing materials, which can be an expensive and time-consuming process. Further, even if that prior restaurant doesn’t have a federal trademark registration, they may still have “common law” trademark rights and may be able to force you to stop using the name.

For that reason, it is always a good idea to order a professional trademark search. In addition to searching the USPTO registry, the search should look for businesses using your ideal name online, in newspapers, in trade publications, in phone directories, and more. If you find anyone using your ideal name (or anything confusingly similar) then you should consider picking a new name.

Get Help

While anyone can technically perform a trademark search and file a trademark application with the USPTO, you are almost always better off getting help from an attorney. They can save you a ton of time and money in the long run by making sure you pick a name that you can protect and that you can be assured won’t infringe the rights of others.

This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.