Ep. 5 – How to Pick a Strong Name for Your Brand or Services
In Episode 5 of the podcast, Mariam Tsaturyan discusses the importance of picking a strong name for your business, brand, product, or service. This is especially important for online businesses that offer various products and services to customers.
- Importance of choosing a strong name for your offerings to protect it under trademark laws.
- Trademark distinctiveness refers to the uniqueness of a brand or product name. Distinctiveness is measured on a spectrum, with generic marks on the left side (weakest) and fanciful marks on the right side (strongest).
- Generic marks are not protectable under trademark law because they are commonly used words or phrases in a particular business type.
- Merely descriptive marks describe the function or nature of a business and are not protectable on their own, but can acquire distinctiveness over time through heavy marketing and advertising.
- Suggestive marks are the sweet spot for many small businesses, as they are creative and distinctive enough to receive trademark protection. An example of a suggestive mark is Netflix.
- The strongest marks on the spectrum are arbitrary and fanciful marks. Examples of arbitrary marks are Apple and Amazon, which don’t describe their respective industries but have strong brand recognition due to marketing and presence.
- Arbitrary Marks: Existing words or phrases that don’t describe the goods/service
- Marketing and Advertising: Importance of building brand awareness around arbitrary marks
- Fanciful Marks: Strongest and most difficult to create brand awareness; Completely made-up words
- Spectrum of Distinctiveness: Generic, Merely Descriptive, Suggestive, Arbitrary, and Fanciful marks
- Trademark Search: Essential for avoiding infringement and ensuring distinctiveness
- Trademark Search as Art and Science: Complexity of the USPTO database
- Role of Trademark Attorneys: Conducting searches and analyzing results
Links:
- Free PDF Guide for Trademark Name Search: https://mariamatlaw.com/naming-guide
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Transcript
Episode 5
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[00:00:00] Mariam Tsaturyan: Today's topic is an important one for business owners.
[00:00:04] Mariam Tsaturyan: It is specially important for online business owners because we're going to talk about how to pick a strong name for your business, brand, product, or services. As online business owners, you probably have all kinds of offerings out there for your ideal customers, you might have online courses, you might have coaching programs, memberships, digital downloadables, eBooks.
[00:00:31] Mariam Tsaturyan: You might have actual physical products that you're giving away, printables. You might have some music compositions and whatnot. It's important to pick a strong name from the very beginning in order for your offer to be protectable under trademark laws. Now, you don't have to go out there and actually register your trademark if you don't want to or if you're not ready for it, even though I highly recommend you do that [00:01:00] because it is the only way you will actually own the brand that you're building.
[00:01:05] Mariam Tsaturyan: However, even if you were. To register your trademark. Having a strong name is essential in order to protect that name in order to build a brand around that name. So today that's what we're going to talk about, how to pick that good name for your offerings, for your services, for your product, no matter what.
[00:01:30] Mariam Tsaturyan: Before we begin, I do need to do my legal disclaimer. I am a licensed attorney, however, I am not your attorney. Nothing I say during this podcast episodes is meant to be legal advice or for you to construe them as legal advice. Moreover, nothing I say during this episode should be taken as substitutions for seeking your attorney and getting legal advice. If you need specific information about your [00:02:00] particular business or you need to talk to an attorney, get an advice from them. Then please consult your attorney or an attorney in your area. If you don't know anybody, get in touch with me. I'll be happy to put you in touch with somebody.
[00:02:13] Mariam Tsaturyan: Let's get started with this amazing episode because you, my friend, are going to walk away with some actionable steps if you're at the stage where you need to pick a name for something that you're offering to your ideal customers out there, even if you are not. If you have a product and after today's episode you realize that the name you've picked for that is not a good one, is not a strong one, maybe it's time for you to rebrand. This episode will give you the push and the kick that you require in order to do that.
[00:02:45] Mariam Tsaturyan: So let's begin. We want to determine the strength of a trademark. We usually measure it by its distinctiveness. When we talk about trademark distinctiveness, we [00:03:00] refer to how unique that brand or product name is. Now I'm going to say trademark for the duration of this show, but please understand when I say trademark, I'm talking about both service marks and actual trademarks, meaning for services.
[00:03:18] Mariam Tsaturyan: That name is called Service Mark. And for product based businesses, it's called a trademark, but I do use the word trademark for both at the same time. This is valid whether you have a service-based business or a product-based business or a hybrid. When we talk about the distinctiveness of a trademark, we refer to how unique that name is.
[00:03:38] Mariam Tsaturyan: That uniqueness of a trademark plays a huge role in your brand's strength. When we refer to distinctiveness, we generally mean whether. The word that you have picked to protect for your brand or product or services, is that word a commonly used word in that business? Is [00:04:00] it a word that merely describes what that business does or a function of that business?
[00:04:05] Mariam Tsaturyan: Is it a word that. Is completely made up. So trademarks can be inherently distinctive or if they're not inherently distinctive, sometimes through use over a period of time, they can acquire distinctiveness. So whatever name you pick, For your products, services brand name out there, make sure that it is a distinctive name from the very beginning.
[00:04:33] Mariam Tsaturyan: Less headaches and complications for you down the line. So this might seem a little bit confusing initially, but I promise I'm going to talk about this in very simple terms and try to give you examples along the way so that you can actually understand what each one of this is and actually see it as it's being used in every day commonly known brands or businesses so that you do not get confused and you actually [00:05:00] understand what this is about.
[00:05:02] Mariam Tsaturyan: Now the distinctiveness, as I said, we measure it on a spectrum. So think of it. Straight horizontal line from one end to the other. On the far left side of that spectrum of that line, we have what we call generic marks. On the far right side, we have what we call fanciful marks. Now the level of strength for the names, for the brand names get stronger as you move closer to the fanciful. Generic marks, which are on the far left side of the spectrum are the weakest marks. In fact, generic marks do not get any trademark protection. They are not registerable. They are not protectable. Or if they were at some point registered, they have lost that registration status.
[00:05:55] Mariam Tsaturyan: They are no longer distinctive, for example. Something like [00:06:00] aspirin used to be a registered trademark, but people used it so much as a substitution for a painkiller that the brand aspirin started to lose its distinctiveness. It became too popular, and the word acquired commonality, so to say. People started using aspirin as a substitute for painkiller. Therefore, the brand name, registered brand name Aspirin lost its protection because it was no longer distinctive. It became a generic name. So generic names not protectable under Trademark Law, not Registrable. Generic names are those.
[00:06:43] Mariam Tsaturyan: When you. Pick a name that basically is a commonly used word or phrase that is used in that particular business type. Let's say you are a business owner who wants to open up a coffee [00:07:00] shop and you name your coffee shop. and you want to register that name to protect it. You cannot do that. The word or the phrase coffee shop is a commonly used phrase that people in that business use to describe their businesses.
[00:07:19] Mariam Tsaturyan: So you cannot register the word or the phrase coffee shop, because that would prevent all the other coffee shop owners out there from using that phrase. And that's not something that's ever going to happen. So do not pick generic names for your brand, for your product, for your services, or whatever it is that you're doing out there.
[00:07:41] Mariam Tsaturyan: The next level of distinctiveness is this marks called merely descriptive marks. Now these are just the slightly stronger marks than the generic ones. On their own. Merely descriptive marks are not protected either under trademark [00:08:00] law. So again, I would highly recommend to stay away from merely descriptive marks as well, because.
[00:08:07] Mariam Tsaturyan: On its own from the beginning, they are not protectable. Now, the difference between merely descriptive and generic marks is that merely descriptive marks can acquire distinctiveness through use over a period of time. In other words, if they acquire distinctiveness, if they acquire what is called a secondary meaning with consumers over time, then it's possible to protect and register that name.
[00:08:38] Mariam Tsaturyan: Examples of those are General Motors and General Elect Electric. These. Descriptive marks. However, this brand over time through use, through heavy marketing and advertising with their consumer base acquired that secondary meaning so much so that General Motors and General Electric [00:09:00] became distinctive brand names.
[00:09:02] Mariam Tsaturyan: Therefore, they can be protected however. If you are at the stage where you're just about to fe determine a name for your offering, for your brand, for your business signature product, then I would highly recommend to stay away from generic and merely descriptive names. The merely descriptive names describe what your business does, or they describe a function of a business.
[00:09:30] Mariam Tsaturyan: For example they are actually very similar to generic names in the way they come up. For a consumer, let's say you are a contractor that specifically, let's say your niche is to build houses or single family houses. Let's say that's your specialty. I don't even know if there's such a specialty.
[00:09:49] Mariam Tsaturyan: This is just an example, , but let's say that's your specialty, right? A contractor who builds single family houses, . If you were to create a business and you say [00:10:00] a single family house building, that would just be describing what you do. In other words, it describes a function of that business. It describes the nature of that business.
[00:10:14] Mariam Tsaturyan: Therefore it is not going to be protected unless. Over time, in five years or so, it acquires that secondary meaning that distinctiveness, and when we say acquires distinctiveness, it's not an easy thing to have a merely descriptive name acquired distinctiveness. It usually means a lot of money that you need to spend because one of.
[00:10:41] Mariam Tsaturyan: Most popular ways and most common ways that a mark can acquire distinctiveness and be known with its consumer base as an actual brand, have that Secondary meaning is if you spend a lot of money on marketing and advertisement, So if they keep seeing [00:11:00] your brand out there over and over again in, in all kinds of marketing and advertising campaigns, there is a good possibility that over time that name will acquire that secondary meaning as an actual specific, distinctive brand.
[00:11:14] Mariam Tsaturyan: But as I said, it comes down to money. You have money, you have the time. You will spend a lot of it, you will spend a lot of time on it in order to make it acquired distinctiveness. So if you have a choice, And a chance from the very beginning, pick a name that is not generic or descriptive. Now, the next step or the next level of a mark on this spectrum are what we call suggestive marks.
[00:11:42] Mariam Tsaturyan: Now, suggestive marks are going to be the sweet spot for many small businesses out there, including online business. suggestive marks are similar to descriptive marks, but they are one step stronger because [00:12:00] they don't outright describe what that business does or what the function of that business is.
[00:12:07] Mariam Tsaturyan: Instead they suggested, as the name suggests, they tend to be little bit on the creative side. Therefore, they do get that stronger mark, stronger distinctiveness, and they get actual trademark protection. Suggestive marks are registrable, and as I said, most small businesses will fall under this category.
[00:12:33] Mariam Tsaturyan: An example of a suggestive mark is something like Netflix, for example. When we say the name Netflix, it is not describing right what the business does or the function of the business because if it did, then we would have something like streaming movies online or streaming videos online that would be descriptive or even generic.
[00:12:54] Mariam Tsaturyan: Instead, it's Netflix. We still know what it's about because it's very suggestive. It's a [00:13:00] compound word. When we take it apart, we can have an idea of what it does, but it doesn't come out and outright say it. So with suggestive marks, you do get trademark protection. It is one step stronger than descriptive marks, and it's actually protectable under trademark law as well.
[00:13:18] Mariam Tsaturyan: So this. Good place to start as a business owner. If you are picking a name, I would suggest to start with suggestive marks. Now going back to the descriptive marks. One thing I do have to mention this is where trademark law and marketing. Ideas and concepts, but heads because a lot of business owners, they want to pick names so that it is evident to their consumers from the name immediately what it is that their business does, what services they provide, because it just makes sense.
[00:13:52] Mariam Tsaturyan: You want them to know what you do. You don't wanna pick a name that's going to be so out there for marketing purposes that your consumer might [00:14:00] have no idea what your business does. This is one of the reasons why many business owners settle on descriptive marks because it is more important for them, for their ideal customers to have an idea what they do right from the name rather than pick a strong trade.
[00:14:18] Mariam Tsaturyan: Now, this is great from the marketing perspective, but here's the thing. , you are building a brand for yourself if you intend to actually grow and scale this business. If this is something that you're doing an intent to do for long periods of time, maybe you don't have to, but maybe you are even considering selling it down the line, or this is part of your generational wealth building.
[00:14:48] Mariam Tsaturyan: That you wanna pass on, then it is more important to have a stronger mark that will be protected under trademark law than to have a name that will help you with [00:15:00] marketing and make it clear to your audience what it is that you do. Because if your marketing is on point, if you found your ideal customers, if you are talking about your services and products, and you have this, Presence out there.
[00:15:17] Mariam Tsaturyan: Your name doesn't have to be anything. Your name can. Jungle for all intensive purposes, and they'll still know what it is that you do. A good example of that is Amazon for example, or Apple. And we'll come back to this. Brands, these names are not suggestive. These are very strong trademarks, but the names don't even suggest what this companies do.
[00:15:39] Mariam Tsaturyan: Apple. Have nothing, has nothing to do with electronics. Amazon has nothing to do with e-commerce, but because they have built this presence out there, because they're talking about their products, their services they don't have to worry about picking a name that their consumers will have an idea from the get-go.
[00:15:58] Mariam Tsaturyan: So let's move on. That was [00:16:00] just a little like tidbit for you to consider if you're considering picking a descriptive name for that particular reason. Now let's move forward from the suggestive marks right. The next step on the spectrum distinctiveness spectrum are arbitrary remarks. Arbitrary marks are considered very strong trademarks.
[00:16:21] Mariam Tsaturyan: They are one level down from the strongest trademarks with just. Arbitrary marks are words or phrases that already exist out there. These are not made up words. These are words that exist, but these are words that do not describe the good or services of that particular business in any way. An example of this we just talked about, it would be Apple.
[00:16:51] Mariam Tsaturyan: Apple would not be protectable if you were to create a business to sell apples like the fruit apple. However, the company [00:17:00] Apple does not sell fruits. The company Apple sells electronics. They sell phones iPads MacBooks, computers, laptops, and all of that. So Apple. The fruit apple. The word apple has absolutely nothing to do with electronics, what that business actually sells.
[00:17:19] Mariam Tsaturyan: But the company took that word, applied it to their business, and marketed it so much, publicized it so much that the consumers out there associate that. with electronics, they associate the word apple with high quality electronics, with luxury, with sometimes expensive electronics. But Apple was able to build a brand around the name that has nothing to do with what it is that they're offering for sale, but because of their marketing, because of their.
[00:17:59] Mariam Tsaturyan: [00:18:00] Advertising campaigns out there, they did create that awareness, that brand awareness that is necessary to build a presence among your consumers, and they are a protectable brand. Now, I do have to say though, it is not easy to pick an arbitrary name and create a brand presence. If you are a business that is very low on cash or.
[00:18:26] Mariam Tsaturyan: reason being is because it is going to take a lot of advertising, a lot of publicity marketing, and all of that requires money. , right? If you were to do ads and commercials and whatnot, to create this nationwide awareness or wherever your business is, awareness with your consumers out there, you would require considerable amount of money and time and resources to do that.
[00:18:53] Mariam Tsaturyan: Marketing, advertising, publicity, so much so that your. Customer [00:19:00] associates that word with your business products and services. So just something to keep in. Now the next level of trademark marks, this one is the strongest mark that you can have. And incidentally, the most difficult one that you can have to create a business presence around to create brand awareness around are fanciful marks.
[00:19:25] Mariam Tsaturyan: Now, fanciful marks are obviously protectable under trademark laws. They are incredibly strong. These are hard to do as a small business owner because fanciful marks are even more difficult to create that business awareness. Brand awareness around reason being is because fanciful marks are completely made up words.
[00:19:49] Mariam Tsaturyan: These are words that did not exist. These are words that are specifically created to apply to that particular business, product, or [00:20:00] services. For example, something like Kodak, something like Xerox, Adidas. These are all fanciful marks. They mean absolutely nothing, meaning outside of this company. These words do not hold any meaning with Apple or Amazon.
[00:20:19] Mariam Tsaturyan: Those words have meanings even though they in no way describe the function of the business. But on Apple, we know it's a fruit. Amazon, for example, we know it's the jungle Amazon or the river Amazon. So these words have meanings outside of the businesses, even though they are not describing the business or functionality of.
[00:20:39] Mariam Tsaturyan: But fanciful marks have no meaning outside of the businesses. So as you can imagine, you do have to do even more marketing more. Public publicity, more advertising, have more commercials out there to number one, introduce this completely [00:21:00] made up word to your ideal customers. This word did not exist until you coined it or came up with it.
[00:21:06] Mariam Tsaturyan: So you do need to do a lot of publicity to, number one, introduce them to this word, and number two, for your consumers to actually associate that. with your business products and or services. So now we have covered the spectrum of distinctiveness. We went from the weakest to the strongest. So on the weaker side, we have generic marks, merely descriptive marks, suggestive marks, which is, as I said, the sweet spot for a lot of business owners.
[00:21:40] Mariam Tsaturyan: This is where I would recommend you start from, and then we have arbitrary marks and then fanciful. So any one of the names from suggestive to Fanciful would be a good idea for you to have as a business owner for your signature programs, for [00:22:00] a brand, for your e-commerce store, for your products, your services, whatever it is that you have.
[00:22:06] Mariam Tsaturyan: In order to make sure that you actually have a strong brand name or a trademark, you need to constantly monitor it. You need before we get to the monitoring, let's get to the first step that you need to do. That is absolutely necessary before anything else, and that is a trademark. a trademark search, even though it says trademark search.
[00:22:33] Mariam Tsaturyan: As I said, you don't have to register your trademark immediately if you don't want to. , but a trademark search is essential when you are picking a name that you intend to create a brand around. Whether you are choosing a name for a signature product, whether you're choosing a name for a new business that you are starting a service that offering, you need to do [00:23:00] a trademark search to make sure that number.
[00:23:04] Mariam Tsaturyan: the name that you want to pick is not infringing an already existing business or product name out there. That's number one. You don't wanna be somebody who is infringing somebody else's intellectual property, right? Number two. You want to make sure that the name you're picking is not going to have that genericness, distinctiveness aspect or merely descriptive, I'm sorry.
[00:23:33] Mariam Tsaturyan: Not distinctiveness is not going to be generic. It's not going to be merely descriptive. It's actually going to be suggestive or. And a trademark search will help you determine that because your attorney is the one who's going to analyze the results and they'll tell you whether the name that you wanna go with, where it falls on the distinctiveness spectrum.
[00:23:57] Mariam Tsaturyan: So do not skip this step. [00:24:00] Do not be the person who goes and does a Google search or social media search and determines that, Hey, I have searched the web, or I have searched the social media accounts or platforms, and this name does not exist as we touched upon. Briefly in episode four when we were talking about intellectual property rights, a trademark search includes much more in it than just going on Google or even going on US PTOs database and typing the actual name as it is.
[00:24:34] Mariam Tsaturyan: Search. Trademark search is equal Parts Art and science. Yes, I say science because a lot goes into a trademark search and it's an art as well because you need to be creative in what you search. I'll be very honest with you doing a trademark search can get complicated even for US attorneys reason being is because US PTOs database is.
[00:24:58] Mariam Tsaturyan: Possibly the [00:25:00] absolute worst database that you can go into and try to look for something. It is complex, it is complicated, and unless you are proficient at searching, when I say proficient, I, you know the actual formulas to input in a search bar, to search to get maximum input. The results, you are not going to get the results that you want to.
[00:25:22] Mariam Tsaturyan: You will most likely put your name that you wanna use. It'll give you an error, which means there's nothing like that out there, and you're going to think you're clear to use that name. Now, that's not the case, obviously. This is why I highly recommend getting a trademark attorney to do your search because us trademark attorneys number.
[00:25:43] Mariam Tsaturyan: We have softwares and services out there that we use to do this search because not every single attorney is proficient at doing the formulas that they need to do on the U S P T O database. So what we do as attorneys, we do manual searches on the U [00:26:00] S P T O database. Then we have. Third party platforms and softwares that help us do even more in-depth searches.
[00:26:10] Mariam Tsaturyan: Then we use that, and then we use the results from both searches and then sit down and analyze the results one by one to determine what is the absolute best name or what potential complications might arise from the name that you have. So make sure to not skip that step. Do it because it is absolutely essential for you to choose a name that will be protectable and that you can build your brand around.
[00:26:41] Mariam Tsaturyan: Now this is basically it for today. I wanted to give you the guidelines for picking up name. That would be protectable, picking a name that would be strong and you can make a brand around to help you out with searches. I do have a free PDF guide that [00:27:00] I put together where I talk about some do it yourself steps that you can take when conducting a trademark.
[00:27:08] Mariam Tsaturyan: If you are at the stage where you're not ready to hire an attorney to do your trademark search for you, this PDF is going to give you certain steps that you need to take. It's going to walk you through the process of trademark search in detail. So once you follow this guidelines, at the very least, you'll have a more.
[00:27:27] Mariam Tsaturyan: Thorough results list than if you were to do the search on your own without any guidance whatsoever. I'll put the list. I put the link to this trademark name guide in the show notes, so make sure go ahead and download that so you can do the search yourself if you are at the process where you are picking a name for a signature product, a brand, a new business, a service.
[00:27:50] Mariam Tsaturyan: I hope you like today's episode. If you are walking away with new knowledge that you didn't have before and you think what you learned today will help you down the line, [00:28:00] I would love it if you were to leave me a review for this episode or for the podcast in general on Apple Podcast, and I'll leave a link in the show notes as well for that.
[00:28:11] Mariam Tsaturyan: Thank you so much for spending your time with me. Until next time.