What’s in a Name? A Trademark & Branding Primer for Start-Ups
Nothing gets a start-up or any newly-launched business endeavour stumbling out of the gate worse than failing to heed the five branding tips that are the subject of this post. These five tips are inherently rooted in trademark considerations, which can have far-reaching legal and marketing implications if not followed.
First and foremost, a trademark or service mark serves as a brand identifier, which indicates to consumers the source of the associated product or service. So, in order to get that critical association right in the public’s mind from the outset at launch, take these tips to heart:
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Clearance is KING.
Before you spend one penny on marketing, including securing a URL, you better make sure any mark you intend to use is available. Availability, however, is a tricky determination, particularly in the U.S. This is because:
- Prior users can have rights via registration, or rights via mere use in commerce (otherwise known as “common law” trademark rights), and;
- Likelihood of confusion, not whether a mark has an exact match already in use, is the ultimate litmus of availability.
Therefore, merely searching for exact matches in the USPTO’s Trademark Electronic Search System (TESS) and with Google cannot be the end of the inquiry. To be sure about availability, you should have a trademark attorney perform the search for you. But if you go it alone, you have to think a little outside of the box because likelihood of confusion (the legal standard for trademark infringement) contemplates multiple factors, the most important being the similarity between two marks, which is determined by:
- Similarity in sight;
- Similarity in sound, and;
- Similarity in meaning.
And don’t assume that just because your mark is available to serve as a fictitious business name, the name of a registered entity like an LLC, or as a URL, it is automatically available as a trademark. Agencies responsible for sanctioning names for these uses do not consider likelihood of confusion with the same breadth as trademark law does.
In the end, a mark is a source identifier to your targeted comsumers, so it must be unique in the industry(s) in which you operate.
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Generic & Descriptive is Out, Arbitrary & Fanciful is In.
A generic term can’t function as a mark, and a descriptive term can only act as a mark when consumers actually recognize it as a source identifier, which takes a minimum of five years’ continuous use to prove. Think “Beer” if you are selling a lager, or “Dark Liquid” if you are selling coffee.
Generic and descriptive names are on the low end of the trademark “strength”” scale, while arbitrary and fanciful terms are the cream of the trademark strength crop. Of course, coming up with the next “Xerox” for copying services, or “Google” for a search engine requires a lot of thought, but to the most creative entrepreneurs go the spoils of trademark recognition.
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Hit a Marketing Home Run: Use Both a Mark and a Separate Generic Name for Products and Services.
Knock your marketing efforts out of the park by identifying your product or service to consumers with both your (hopefully) arbitrary/fanciful mark and the generic name for what you are offering. Any company can offer hamburgers and fries, but only one can sell “Five Guys burgers and fries.”
4. Consistent Display Helps Keep Infringement Away.
Competitors and consumers alike will never be confused about the scope of your rights and what you are offering if you always display your mark the same way each time it is used. Consistent usage of a mark, by bolstering consumer recognition, strengthens your mark’s legal and marketing powers. The best ways to consistently display a mark are by:
- Using capital or italics letters for the mark to distinguish it from surrounding text (especially in contrast with any generic/descriptive identifier you use, see tip #3), and;
- Using the same font, style, and color for mark, whether a standard word mark or a logo is involved.
5. Be Aggressive & Strong, Symbolically Speaking.
If you have not yet secured a trademark registration, be sure to attach a ™ symbol after your mark, which is an acceptable method of telling the world that you have common law trademark rights. If AND ONLY IF you have been issued a trademark registration certificate, place a ® symbol after your mark. Using the ® symbol without a registration certificate can lead to fraud charges, so BEWARE.
Conclusion
These five tips of trademark selection and use can give your startup a solid foundation to establish brand identity that is valuable and legally enforceable.
