One of the most important steps a new business can take is to file their company or product name for trademark registration with the United States Patent and Trademark Office (the “PTO”). This key step allows a business to oppose any other party that applies to use the same name.

Unfortunately, trademark registration isn’t always easy. If the name you want for your business has a high likelihood of confusion with any other name that was either applied for or registered before yours, the PTO is very likely to deny your registration. Even if it has a high likelihood of confusion with a name not registered or in the application process, it might be infringing if that name has been used in the marketplace already. This post will guide you through how to find a name that is unique and how to ensure that name isn’t likely to be confused with any other on the market or in the PTO’s system.

 

Fanciful Names

The fundamental rule of trademarks is simple: the more distinctive a mark is, the more likely it is to be approved for trademark registration. There are varying degrees on the spectrum of distinctiveness: fanciful, arbitrary, suggestive, descriptive, and generic (from most to least distinctive). The surest way to find a name that will not cause confusion with any other preexisting name—and therefore will receive trademark registration—is to create one that is fanciful, like Pepsi or Kodak.

How do you do this? The overall key is that the name should be original, unique, and meaningless. Think of Pepsi—it is completely made-up and meaningless. The challenge, of course, is choosing a completely meaningless name that is also related in some way to your product. Beyond creating a word that is meaningless, the following tips will help you find a fanciful name.

 

Length

In general, the longer a name, the less likely it’s been used before. More letters means more unique possibilities. This must be balanced with the need to find a name that is easy to remember and easy to type. One good way to do this is to create a name consisting of two words combined in a unique way, such as Facebook or Fitbit. The individual words in these names wouldn’t be trademark eligible on their own, but they are when combined. Portmanteau words, like “Pinterest” (pin + interest), are often successful too. Even simply adding prefixes and suffixes to words, such as ‘ify,’ ‘ly,’ ‘sy,’ ‘ia,’ might help to create an original name.

A note of caution: when multiple words are used, the PTO might consider just one of them—usually the more fanciful one—to be the “dominant” word and evaluate only that for trademark purposes. For instance, if a company called “Pepsi Protein Bars” applied for trademark registration, the other words besides Pepsi would be considered merely descriptive, and the mark would be denied registration because of its similarity to Pepsi. So, adding generic words (e.g., Protein Bars) or geographic names (e.g., Michigan) won’t prevent confusion. On the other hand, if the commonalities of two names are in the descriptors and not the dominant word, like “Dick’s Sporting Goods” and “Penguin Sporting Goods,” there would likely be no confusion.

 

Foreign

 Using foreign words is also a good avenue to finding a fanciful name. This works especially well if that foreign word is misspelled; the more the spelling is changed, the more likely it is distinctive. But be careful: purposeful misspellings of English words (e.g., “healthy” as “healthie”) could still cause confusion with the correct spelling.

There are two important considerations to keep in mind when using a foreign word and even when tinkering with the spelling of those words. First, be mindful of potential translations, even if you think a name is completely made up. You don’t want to find out from an angry customer that your seemingly random name is actually a vulgar insult in his or her native language.

Second, when the English equivalent of a word is registered, the foreign word might be considered confusingly similar if the foreign word is known to the American public. For example, the name “Lupo” would infringe on the name “Wolf.” This rule only applies if someone would “stop and translate” the word—which is why using less well-known languages, such as Zulu or Maori, is better than using so-called common languages, such as Spanish, Italian, or French. While many people might stop and translate the Italian word “Lupo” to wolf, few would do so for the Zulu word for wolf, “impisi.” Moreover, foreign languages that are “dead”—such as Latin—are not subject to this rule, unless the specific word used is commonly known, like “carpe diem.”

 

Conclusion

Overall, the best way to find a name is to combine all of the above strategies. Start with names that have connotations you like. Find synonyms for these names, then translate them, then tinker with the spelling. Add suffixes and prefixes to make it more unique. Try using a fake word or portmanteau generator. Remember, the further the name is from any real word, the more likely it is that you will be able to successfully register it for a trademark. And make sure to read part two of this post, which will discuss how to make sure your fanciful new name isn’t likely to be confused with another, preexisting name.