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Law Office of John B. Hudak, PLLC

An intellectual property law firm: patents, trademarks, and copyrights.

Steps For Picking a Trademark Name

Below is an overview of steps to follow for picking a word or phrase for a trademark:

Note: Each basic/detailed step has its own important elements - for interpreting the results - which are not fully explained. Below is a starting point for a full analysis.

The basics are:

1) Pick a name (word or phrase)

2) Search to determine if that name or a similar enough name is already registered or in the market?

If, no, then ok.
If, yes, go to step 3.

3) If the name or a similar name is already registered or in the market, is your use/expected use similar enough to the other user with the name or similar name?

If, no, then ok.
If, yes, then consider another name.

Details for Step (1) - Picking a Name:

The name should not be:

generic, which means the normal word for something (ex. the mark of “mower” for a lawn mower)
immoral, deceptive, or scandalous

The name should not: (although it is possible to gain certain rights)

be descriptive, which means the mark describes the good/service (ex. the mark of “mint” for a mint flavored product)
have a primarily geographic location significance
be primarily merely a surname (last name)

For increasing chances of long term success, the name should not be:

famous, which means many people would know the name as a major brand

Details for Step (2) - Searching:

Primary places to look:

Trademark Electronic Search System (TESS) – Trademark Office database of registered marks, applications for marks, and cancelled/abandoned marks,
Web Search – Search on Google
Translation - Enter into Google Translate to determine a possible unwanted meaning in another language (ex. you made up a word, determine if it means something in another language)

Secondary places to look (although part of a full analysis):

State Trademark Databases – Trademark Office Compilation of State trademark websites. (ex. State of Connecticut State Trademark Search Database)
Business Name Databases – Each State has a website for registered businesses. (ex. State of Connecticut website for searching registered businesses. An explanation on how to search the Connecticut website.)
Internet Domain Name Databases – (ex. GoDaddy search)
Social Media Name
WIPO Search – World Intellectual Property Organization Global Brand Database

Determine if a mark is similar to another based on:

look alike
sound alike
a translation of the word means the same or similar meaning to another word
a pictorial representation is the same as the word (ex. a picture of a building can be equivalent to the word building)

Details for Step (3) - Similarity of Use:

If the name or a similar name is already registered or in the market, the use of the new name should not be:

the same or similar as the existing name (ex. (a) new name is for furniture and the existing name is for furniture; or (b) new name is for coffee tables and the existing name is for end tables)
a good/service which is a good/service which is in the same group of goods/services which are commonly sold together under the same name (ex. new name is for fishing vests and the existing name is for t-shirts, and it’s typical for companies which sell fishing vests under a name to also sell t-shirts under the same name)
a good/service is marketed or sold in the same place (ex. new name is for socks and the existing name is for underwear, and it’s typical to buy socks and underwear in the same place such as an online store)
a service for selling a good; or a good offered as part of the service (ex. (a) new name is for the service of an online store selling clothing and the existing name is for t-shirts; or (b) new name is for motor oil and the existing name is for the service of automotive maintenance)

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Law Office of John B. Hudak, PLLC

An intellectual property law firm: patents, trademarks, and copyrights.

Steps For Picking a Trademark Name

Below is an overview of steps to follow for picking a word or phrase for a trademark:

Details for Step (1) - Picking a Name:

Details for Step (2) - Searching:

Details for Step (3) - Similarity of Use:

Extra Reading for Understanding Picking a Trademark Name

Government Resources - Trademark Manual of Examining Procedure

Law Office of John B. Hudak, PLLC

An intellectual property law firm: patents, trademarks, and copyrights.

Steps For Picking a Trademark Name

Below is an overview of steps to follow for picking a word or phrase for a trademark:

Details for Step (1) - Picking a Name:

Details for Step (2) - Searching:

Details for Step (3) - Similarity of Use:

Extra Reading for Understanding Picking a Trademark Name

Government Resources - Trademark Manual of Examining Procedure

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