How to Trademark a Product Name

The name of a product that your company manufactures or sells is one of the primary things that people look to protect with a trademark registration (the other being a service offering). Developing a great name for your product is an important part of advertising your brand, and so this name should be developed with trademark protection in mind.

Whether it is a product name that is sentimental to you, a name that is catchy and easily remembered by your customers, or just a product name that you think is an exciting addition to your offerings, these product names should be protected by trademarks.

Why a product name should be protected with a trademark registration

A trademark for your product is the most effective way to ensure that no other company can potentially cut in on your profits by selling similar products or goods with your brand name on them. Trademarks protect the distinctive names for products that many hours of labor have gone into developing to allow business owners to use their name without fear that someone will steal it for their own gain.

A trademark registration is always connected to a good or service, or in this case a product name and it must signify a “source of origin,” or simply show who has made and developed the product. Although this sounds like just business names, many successful product names themselves often signify exactly who they are coming from. iPhone®, Oreo®, and Corvette® are all examples of product names that successfully identify their source of origin and are all distinctive in their own way while maintaining upstanding trademark protection. Thus, developing your product name with trademark protection in mind will allow you to have a greater chance in the marketplace and a better chance in any proceeding before the United States Patent and Trademark Office (USPTO) when registering the mark.

4 Steps to Trademark a Product Name

Here are the four essential steps to take when seeking a trademark registration of a product name:

1) Come up with a unique brand name for your product

“My name is more important than myself.”
– Pierre Cardin

A product name gives life to your creation and a manner by which consumers can easily recall the product. A strong name will not let a consumer forget your product’s name, even if they see it on the shelf and do not buy it. This strength of a name is protectable under trademark law, and the more distinctive the name is, the greater the protection is for the name.

The law recognizes a “spectrum” of distinctiveness, first recognized in Abercrombie & Fitch Co. v. Hunting World, Inc. While you may not need to know the details of the case, what emerged from that case is how the USPTO determines whether to register a mark to this day.

Trademark law recognizes four general categories of marks, each comes with their own level of legal protection:

First, there are “generic” marks. These are words that are quite literally what the product is, like ICE CREAM for an ice cream manufacturer, or ACETOMENIPHEN for a brand of pain reliever. These kinds of words get no sort of protection from trademark law. Product names like this not only receive no protection from the law, but are a very poor choice for companies because consumers will not remember the name of your product except by what it literally is, which builds up no goodwill or trust with consumers that buy your product. You should avoid generic names at all costs.

Second, trademark law recognizes “descriptive” marks. These are names that may not literally be the product, but they name a quality or aspect of the product. These would include names like TASTY FREEZE, QUARTER POUNDER, or DRAINO. These marks don’t necessarily say what the product is, but the consumer can certainly understand what they are based solely on the name of the product. Choosing a descriptive mark for your new product is typically not advisable, as it cannot be registered without secondary meaning. Secondary meaning is a legal way to refer to the consumer recognition that arises for the product name when it has been in the market long enough or it has achieved significant enough notoriety. Most new products will not have secondary meaning, so choosing a descriptive name for the product is ill-advised.

Third, there are “suggestive” marks.  These are the first category of marks that would suggest your product’s characteristics, but would not necessarily state it outright. The line between descriptive and suggestive marks is admittedly fuzzy and is one of the most litigated areas of trademark law. A mark like NETFLIX falls into this category. While it possesses some elements of a descriptive mark – the “net” that provides “flix” – it is not outright descriptive of any quality. These marks are definitely trickier and will likely require trademark counsel to argue how they are not descriptive, but rather suggestive, with the USPTO.

Four, there are “arbitrary or fanciful” marks. The most surefire way to ensure a strong product name in both the minds of consumers and in trademark law is to use an arbitrary or fanciful product name. An arbitrary mark is one that uses an existing word but uses it in relation to goods that are not remotely connected to the meaning of the word. Examples of arbitrary marks include APPLE (electronics) or DOVE (soap). These arbitrary marks are granted the pinnacle of trademark protection – as long as they are not confusingly similar to another existing mark.

Fanciful marks are also in this category. Fanciful marks are product names that are completely new words used to describe the product. Think of OREOs from before. These are product names that are strictly the creation of the company that makes the product. Fanciful marks are also warranted this same level of protection.

The reason that these two kinds of marks are given the greatest level of protection is that they are highly distinctive of the source of their source of origin. These product names are so distinctive, according to the USPTO, that they do not need any other scrutiny than ensuring that they aren’t already the same as another product. For the same reason, these names can be highly useful to be distinct in the mind of your consumers, as they would remember the name of your product and there would be no competition in the market for your names.

Practically speaking, there is one major principle to learn from trademark law when choosing a product name: select a name that is arbitrary or suggestive, not descriptive or generic. The temptation to select a name that tells the qualities or characteristics of your product is very strong, as it can be the most straightforward. However, using these distinctive names will almost always be a boon, especially in the trademark realm. Consumers are also more likely to remember a distinctive name with significantly greater ease than some descriptive name. Building a strong arbitrary or fanciful product name may require a little more work and creativity than coming up with a descriptive product name, but it is surely worth it.

2) Perform a trademark search on the selected brand name.

Mentioned before, but not expanded upon, is the idea of “confusingly similar” product names. These are fairly straightforward: trademark law ensures that parties have a right to stop others from using their product name in relation to the same products, including attempted registrations by others. A trademark search can help to ensure that you are the first to use this name in the marketplace and in registration, which means that you have trademark rights.

After you file an application, the USPTO will engage in a search of their own, so you want to be prepared and know if you have superior rights, before you expend time and money in an attempt to obtain a registration that someone else has. You’ll want to go even more in-depth than the search tool provided by the USPTO to make sure that you aren’t missing anything.

“Trademark search” sounds like a simple Google search, but this is far from the case. A trademark search means that you want to make sure that there are no similar names for similar products out there – and it’s nearly impossible to search through all the possible configurations that could be called “similar” on your own. Alternate spellings, “sound-alikes,” different spacing or formatting of a name – these are just the tip of the iceberg for possible similarities that could cause your application to be rejected.

Search companies and law firms use very specialized search patterns and algorithmic data to ensure they have scraped the entirety of the marketplace for anything that may even resemble your mark. There are services that can help you to perform a trademark search, but it is best to do this through an attorney. Attorneys can help to interpret the trademark risk of each result in your search report and can help you realistically talk through the search and application process.

3) File your trademark application with the USPTO.

After you have conducted your search and you are certain that your product name is not confusingly similar to another trademark, it is now time to finally file your application. This step is where the paperwork really gets serious, not to mention the supporting materials required.

To trademark a product, you’ll have to fill out all the required areas of the USPTO application completely and accurately. Failure to fill out these forms accurately can result in your application being denied, so it is very important to be truthful and have all of your research in order. You’ll need information such as the name of the owner of the trademark, a legal description of the goods that will be protected by the trademark, the date of your first use in commerce (or a claim for intent-to-use), and, a correspondence address to which the USPTO can send examination questions (this would be the address of your trademark attorney should you hire legal counsel for the process).

Errors at this step are one of the top reasons that trademark applications get delayed or sent back for clarification. A poorly filled out, incomplete, or erroneous application could even be grounds for rejection – a situation you definitely want to avoid.

While you do not need legal counsel to file your application before the USPTO, it is recommended for the reasons above. This is a very detail-oriented process, and it is good to have an attorney onboard to ensure everything is correct. Additionally, if you have an attorney retained for the search process, then it is an easy and natural transition to have them assist you with your filing. Having an attorney at this stage can also be very important because they can anticipate any sort of action or correspondence by the USPTO, which can be very difficult to properly respond to without an attorney.

4) Follow through with the USPTO during the application process.

Once your completed application makes it through that initial vetting step, an examining attorney at the USPTO will conduct their own review of your product name to determine to their satisfaction that your trademark bears no similarity or chance of confusion with an existing mark.

As you might imagine, the trademark application process can be fairly time-consuming. With a perpetual backlog of applications, it could be 9 to 10 months before your application gets reviewed by the USPTO. From there, the process will take even longer to receive a final registration – normally about 8 months from the review of the trademark application to receiving the final registration.

During this phase, you may also receive what is known as an office action. This is a formal response by the USPTO which states that your application needs to be adjusted or advocated for in order to receive proper registration. It is almost imperative that you have an attorney if this happens.

After the product trademark is approved and registered, you can put the public on notice that you received a trademark registration – by the addition of the small circled “R” next to the mark (®). Be sure to follow through on your responsibilities in protecting your trademark – keeping an eye out for potential similarities between other companies that may come along, and preventing your product name from entering “generic” usage. Since you now have a registration on your product name, you now possess the right to stop others from using it in the marketplace.

And there you have it – start to finish, the steps on how to trademark your product. Be original, diligent, and thorough throughout the process – and use all the tools available to you – and you’ll have the greatest chance of success.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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