Is Your Brand Strong Enough to Qualify as a Trademark?

If you are an entrepreneur/business owner, chances are that  one of the first things you had to do was find a name for your business or brand – one that wasn’t already taken by another business owner. You did a Google search, grabbed the domain name because it was available, invested in marketing, advertising and promotional material, and started building your brand.

I have seen that many entrepreneurs lean towards picking a name that describes what they do or sell. Matt, a jewelry designer, started designing and selling jewelry made of amethyst stones and gold in 2014 under The Amethyst brand name. He bought the domain name because it was available and started an online store. He had very innovative and creative designs and they started gaining popularity. His signature piece won an award at a trade show and was featured in a lifestyle magazine under The Amethyst brand.  

As soon as Matt’s designs gained some recognition, he decided to register “The Amethyst” as a trademark. He applied to the United States Patent and Trademark Office (USPTO) to register The Amethyst as a trademark and his application was rejected because the term “Amethyst” is descriptive of the kind of jewelry he makes and sells and was therefore not protectable.

Matt came to me for a consultation after his trademark application was rejected by the USPTO. I asked him why he picked The Amethyst as his brand. He said because it was easy to remember, it conveyed to people what his jewelry was about, and the domain name was available. Unfortunately, those are not the qualifications that the USPTO looks at in determining if the mark is registerable.  

The USPTO determines that a mark is registerable based on the strength of the mark. Accordingly, there are five categories of trademark – fanciful, arbitrary, suggestive, descriptive, and generic. The chart below illustrates the five kinds of trademark and their relative strength:

Name/Mark Strength/Protection
Bowtruss Fanciful / Strong
BluMonkey Arbitrary / Strong
Starbucks Suggestive / Semi Strong
Coffee By The Roast Descriptive / Weak
Coffee House Generic / Not Protectible

 

Matt has to re-brand his business. But now he is consulting me before choosing his new brand name. I asked him to send me at least 15 options for names that he would consider for his business. Trust me, if it is easy, it is not good enough and somebody is already using that name.

If you are starting your business and need help with choosing the right brand name so you do not end up like Matt, we are here to help you through the process. Please reach out to us to determine if the brand name you have chosen is right for you 

Call us at 646-820-1366 or email us at nupur@nupurshahlaw.com. I am happy to have a complimentary conversation with you on how to choose a strong brand name for your business.   

Working with an attorney to pick a brand name, do a clearance search for name availability, and secure the brand can help avoid trouble later on in your business. Nupur Shah Law can help you if you have questions about trademarks. 

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