Trademarks & Picking a Name for Your Business – Transcript

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[Intro Music] I love you, but I’m not your lawyer. This is for your educational purposes only and does not constitute legal advice. You should not act, or refrain from acting, on the basis of this content without first consulting a lawyer.


Hey everyone!  Today, I want to talk about picking names for your company, for your programs, for your courses, for your services. 

What is in a name? There is a lot to consider. And in fact, this has been an issue that’s been coming up for some of my clients lately. So, I thought it would be great to share this with you in case you are also in a similar situation. 

So here’s the scenario. I’ve had a few clients who have gone ahead and maybe they’re launching a course or they’re launching a program and they have named their program and they’re really excited about it. It’s like the perfect name. They’ve actually started doing all the branding work. They might have even launched the program already, and then they’ll come to me like, “Annette, now we’re ready to trademark it.” I’m like, “Awesome. Let’s go into it.” And so I’ll do my trademark search and lo and behold, either the name is taken or there is another name out there that is very similar to that mark. And so I recommend that, “Hey, let’s not file this trademark because we might not get it approved.” 

So this is what I want to talk to you guys about before you pick names for your company, your programs, anything that is going to be like a real brand in your company, like an asset. I want you,  but ideally someone who has the experience, to do a proper trademark search for you so that you can determine whether or not that name is available for use. And I want you to do this before you invest any money into that program, into the graphics, into the design. Because in the situations with my clients, when we came to that conclusion they had to go back to the drawing board and re-brand everything. And thank God we caught it when we did, but this whole mess could have been avoided if, at the time when they were considering names, they had looped me in. Or they, you know, we had this conversation beforehand. 

And I think it’s important for you guys to understand just the way trademarks work and the way you can go about assessing the strength of a mark. So here’s what I usually talk to clients about when they’re thinking about trademarking a name. So I want you to think about trademarks almost as being on a spectrum. Okay, I call it the Strength Spectrum. 

So on the one hand, you have kind of a generic mark, things that are descriptive. So for example, if I sold applesauce and I had a product called Annette’s Applesauce, that is probably going to be on the generic descriptive end of the spectrum. 

Okay all the way on the other end, you have arbitrary marks, okay. So these are things that are really unique. They’re really distinctive, that may or may not even be real words, or the combination of the word itself, as applied to the category of good or service, makes it distinctive or arbitrary. 

What the heck does that mean? Let me explain. So let’s take the word apple again, okay? So apple is a very generic word. Right? Most people can’t really have proprietary rights over the word apple if you’re selling apples, but if you take the word apple and you combine it with computers, that makes it very distinctive and arbitrary because apples don’t really have anything to do with computers. 

Okay, so that then kind of lands you on this side of the spectrum, which is a lot stronger. Another example: Banana Republic. Okay, they sell clothing, apparel, accessories. Banana Republic, the words themselves, banana and republic, might be generic. You can make that argument, but when you combine it with things like clothing and accessories, it has nothing to do with it. So it makes it very unique and distinctive. 

So why is this important? Okay, so you want to, if you can, try and pick names that land you on the stronger side of this spectrum, because it’s going to be more likely that is going to be approved, assuming that there are no other conflicting marks. That would be potentially create a likelihood of confusion with consumers. Okay. So that’s kind of the biggest thing to think about from a legal perspective. 

But if you think about it, you want your brand name to be distinctive and unique because you don’t want customers out there to be confused as to who is behind a certain product or service? Okay, so I see this a lot with folks in the wedding industry when you’re picking names. You know, they’re so confusing. They’re so similar, you know. It’ll be like a color and a flower name or something, which is beautiful, but how many other planners are there that are like a color and a flower, or a color and an object? Right? And so this happens all the time, especially now with social media, people will accidentally tag the wrong company because either they get the names mixed up, or they don’t remember, or they just get them confused, because there’s so many other similar names out there. 

So this is a real. Actually had a client call me. She’s rebranding and she had some names, and I told her, I said we did a search and I was like, ”you know, there’s some other names out there that are kind of similar. I wouldn’t recommend it, but also really take this as an opportunity for you to set yourself apart in marketing, and in the competition. So, I know you’re really attached to this name, and you really were excited about it, but kudos to you for doing this search up front before you invested any money or time into it, but don’t be disappointed. Just like put your creative juices, you know, get your friends together, like brainstorm some other names.” 

And now that with this knowledge of this Strength Spectrum, which I totally just made up by the way. It’s like not a legal term. Um, this Strength Spectrum, try and like come up with different names, and think of it as a marketing challenge, right? You want to stand out amongst the competition as like the go-to, you know, whatever she is. And that name can really serve as a really great tool in which to do that. 

So I hope this was helpful. I hope that as you guys are thinking about names for your company, for your projects, for your programs, for your courses, that you guys keep this in mind. Not only are there legal consequences when you use a name that is in use, but I think it’s just as important, there are business consequences if the name is so similar to another similar product out there that it creates customer confusion. So if you have any questions about trademarks, you can always reach out to me. I have some great resources over on the website where you can learn more. 

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