When developing a business name, not only should the business name reflect its brand and be memorable, but there are a host of legal issues to consider. Also, naming a business that is capable of trademark registration is very, very important.
Business Name Clearance
Business names may or may not require a trademark search. In most cases, the business will use its name in dealing with the public or others in the trade. Such business names should be searched in much the same way that a trademark or trade name would be searched. Moreover, if a business chooses to use a DBA (assumed or fictitious business name (doing business as)) different from its registered business name, the DBA business name will also require a search.
However, in situations where the business name will never be used when dealing with the public or the trade, there is little chance that the business name would cause confusion with another business name in the marketplace. In such situations, there is generally no need to conduct a business name (trade name and trademark) search.
Additionally, business names require a second type of search which is separate and distinct from the trademark search. As a general rule, a business name must also be cleared or reserved with the Secretary of State’s Corporations Office in the state where the business will be incorporated or organized, and in each state the business will conduct its operations. Note that the Illinois Secretary of State’s Corporation Office determines only whether a business may be formed under a given business name, it does not determine whether the business name can be used in the marketplace – see trademark infringement.
Naming a Business Capable of Trademark Protection
There’s considerable controversy over how to choose the best name for a business. Some business consultants believe that the best names are abstract, arbitrary. Others believe that business names should be informative, so consumers and potential clients know immediately what the business is.
Generally, the more unique or distinctive the business name is, the greater trademark protection it achieves. See: Trademark Law Overview. Thus, choosing a distinctive name for a business is an important strategy for many entrepreneurs and business owners.
Remember, a descriptive name can only receive trademark protection if it acquires secondary meaning. For a business using a descriptive business name to acquire secondary meaning is very, very difficult and usually comes at a substantial cost. Also, terms that describe a geographic location of a good or service, like the Chicago Tribune, are considered descriptive, and they can only be protected upon proof to the USPTO that they have acquired secondary meaning.
Trademark A Business Name
Every business owner or entrepreneur should consider trademarking their business name. At a minimum the business owner or entrepreneur should at least engage a trademark attorney to perform a trademark search to ensure that the business name is available for use. This is especially true if the business starts out as a local business but intends to expand its services or sell its products nationwide. Ensuring that a business name can be registered on the Trademark Office’s Principal Register is most often times highly advisable.