Picture this – you’re starting a new business with a great idea to provide a brand new item to consumers. You’ve researched the market, performed due diligence on the product, and maybe even obtained patent protection on the item. You know there’s a need within the industry for your product, and all you have to do is educate consumers about the product. This is where your branding efforts come into play, and you start to brainstorm names for your product. You come up with a list of possible names, but doubt starts to creep in – will consumers like the name? Is the name unique enough? How do you perform due diligence on the trademark? One of our partners, Nick Pfeifer, recently wrote about selecting a trademark. With Nick’s article in mind, let’s take a look at some specific tips for selecting a worthy trademark for your growing business.

What’s in a brand name?

There’s a temptation, particularly with a brand new product, to essentially describe the item through the trademark. After all, how else will consumers know exactly what you’re providing if you don’t include a descriptive term? Such an approach can help target consumers at launch, since your trademark would come up during a search engine query. However, from a branding strength perspective, merely describing a product should be avoided, if possible. The more descriptive a trademark becomes, the less likely meaningful protection can be obtained. Contrarily, arbitrary or coined words increase the chance of creating a unique trademark. The purpose of trademark protection is source origin recognition, which becomes difficult when a trademark merely described an item. As such, including non-descriptive elements in the trademark increases the chance of growing trademark protection over time.

In addition, you want to ensure that your trademark not only falls on the arbitrary side of the descriptiveness spectrum; you also want to avoid using some common terms that show up time and again in trademark applications. It can be tempting to add common words such as “American,” “National,” “Global,” “International,” and similar terms. However, these types of terms don’t add much to the trademark either. If one of these terms is the only non-descriptive term in the trademark, you will have a tough time obtaining meaningful trademark protection.

Case study: will adding “America” to a trademark work?

As a case study during the week of Memorial Day, I decided to investigate the term “America” and its derivatives. Using the Trademark Office searching database, I queried for active trademark registrations; pending trademark applications; expired trademark registrations; and abandoned trademark applications. Keep in mind that the goal of trademark protection is to create a unique source identifier to obtain broad protection. The more trademark applications and registrations exist, the slimmer the trademark protection for your own mark. The goal is to have as few results as possible for your chosen name to ensure brand recognition; the more unique the trademark, the more meaningful the trademark protection.

Running the search, over 24,000 active trademark registrations and applications exist including a variation of the term “America”. Of those, over 20,000 results were registered trademarks, with the remaining 4,000 results being pending registrations. In addition, over 25,000 registrations have lapsed by expiring, and over 31,000 applications became abandoned before registering.

How to differentiate and create a strong brand name

What do these results mean? With a grand total of over 80,000 trademark results including a variation of “America,” the term itself isn’t unique. For example, if you’re selling a product that’s relatively similar to an existing product, with a similar name, adding “America” isn’t going to do much to differentiate. In addition, since there are so many different “America” based trademarks, the field of trademarks is extremely crowded. This results in each trademark receiving a smaller scope of protection as compared with more unique marks. Since the entire goal of the trademark process is to create source origin recognition, coexisting with thousands of similar marks isn’t ideal. As such, it would be better to add something non-descriptive to the trademark to increase uniqueness.

Trademarks can be deceptively complicated, but the good news is that everyone inherently has an understanding of trademarks. We constantly recognize and associate brand names and logos when we interact with new products and services. Typically, we buy similar goods from similar sources because we expect a certain quality; we recognize those goods because of their brand recognition and the strength of their associated trademarks. While it might be tempting to add a simple term like “America” to a trademark to differentiate from something else, it’s not the best strategy to obtain meaningful trademark protection.