CrossBeamIP - Trademark Street Smarts (2026 0526)

Entrepreneurs are likely to approach the choice of a name for their new company or product with emotions very similar to those felt by parents who are picking their new baby’s name. What will the name they pick tell the world about this infant? They will want it to be distinctive: ten other kindergartners at their child’s future school shouldn’t share a version of that name. It should be unique, but not so outlandish as to embarrass their child. They want a name that hints at their baby’s outstanding characteristics, like “Belle” or “Victor,” still, something merely descriptive may not capture their child’s true singularity. It’s a very emotional decision for parents, just as it is for company founders. 

Entrepreneurs, like new parents, will usually have some general sense of the “red-light zones” they should avoid at all costs; for example: 

●	choosing a name that is too close to, or easily brings to mind, the well-known, trademarked brand of another company in the same class, such as calling one’s new computer company “Orange,” accompanied by a visual image of an orange with a bite taken out of it; or

●	using a name that describes a product’s key feature but could also be applicable as a description of many products in the same class (e.g., you would not want to try to trademark your new skin cream under the brand name “The Moisturizing One!” given that most skin creams promise a moisturizing effect).

Company founders are also likely to understand that there are some clear-cut “green light zones” in choosing a trademarkable company or product name, such as:

●	using a newly made-up word, created just for this purpose, lacking meaning but nonetheless euphonic (think of “Xerox” or “Kodak”); or

●	using an existing word that has no connection whatsoever to the product or the class in which trademark registration is sought (the company called “Amazon” is a good example).

Those examples are easy. There is a range of much harder issues that may require careful analysis when choosing a name and/or image to trademark. Let’s call this the “yellow zone” - the “proceed with caution zone.”  It includes many pitfalls that a person inexperienced with trademark branding may fall into. This “yellow zone” also offers many ways to create a strong, protectable mark, but only if the right conditions are met, and the proper guardrails are in place. For example:

●	Properly Identifying the Class to Which the Mark Should Be Assigned: One of the most difficult aspects of applying for a trademark is properly picking the class the product or business falls under. If done improperly, the new company may face undeserved resistance to registering its mark, either from the USPTO itself or from other companies in the wrong class. Picking the right class is, essentially, claiming the battleground on which you’re willing to fight. You don’t want to end up on the wrong battlefield, with your trademark mortally wounded by challengers who are not your competitors and whose products are entirely unrelated to your own. That’s a fight that didn’t have to happen.

●	The Descriptive Name vs. the Suggestive or Ironic Name: While it’s usually a mistake to include a word in the mark that outright describes a product or its most obvious features, there are at least two exceptions that could help an entrepreneur convey a product’s features with more subtlety:

○	The Suggestive Name: You can choose to trademark a word that gives a strong hint at its characteristics by using the name of some totally unrelated thing known for the same qualities. When you call a company “Caterpillar,” you are bringing to mind a creature whose sole purpose is indefatigably digging into dirt, churning dirt up, or creating tunnels through dirt, seemingly without rest. That immediately suggests the qualities of the excavators, backhoes, and other vehicles designed by the company with that well-known brand.

○	An Ironic Description Can Sometimes Be Trademarkable. Think of the low-cost car rental company “Rent-A-Wreck.” We glean from the name that this is not a company that aims to rent you a luxury car at a high price. Of course, the company doesn’t rent actual wrecks; to do so would be illegal. We assume that to stay in business, their cars will at a minimum meet all government inspection standards. But by using the exaggerated descriptive term “wreck,” that brand name ironically describes a company that offers low-cost rentals of modest older-model cars.

●	Use of an Acronym or Abbreviation in a Trademark: This is likely to be a feeble trademark, unless everyone understands the abbreviation’s meaning. “U-Haul” works, though, because the abbreviated name is understandable to most, if not all, English-speaking people. 

●	Geographical Indications Within a Trademark: Usually, including some geographical reference within a mark will likely cause it to fail the registration process: these are generic place references that others must remain free to use in other contexts. But a clever combination of a geographic region and a product or service may circumvent this general rule. Consider “International House of Pancakes,” a strong trademark despite the inclusion of the generic word “international.” The company name suggests a restaurant primarily focused on pancakes, with a menu featuring specialties inspired by traditional recipes from around the world. There’s nothing “international” about the restaurant; it’s purely an American adaptation or interpretation of dishes that may in some form have originated in another country, like French crèpes, for example. And there’s nothing in the trademarked brand to prevent another restaurant from using the word “international” in its name, so long as it’s not serving pancakes.

●	Registering a Trademark When the Identical Domain Name Is Not Available: Usually, you would want to check on the availability or use of similar domain names to your own chosen brand name. Domain names are purchased or licensed, but they are not subject to the same level of protection as trademarked language. Usually, if someone owns rights to a domain name, you should carefully investigate whether that domain name is associated with a registered, thus protected, mark. If not, an attorney may help you weigh the risks of obtaining a similar but not identical domain name. When your trademark is registered, you might even be able to demand that the user of the pre-existing domain name cease use, because there is now a registered trademark that the domain name is infringing. But seek professional advice before assuming you can do this; it’s a “proceed with caution” issue.

Simply because, like the parent of a new baby, an entrepreneur may feel emotionally attached to a particular name or mark, a businessperson may have blinders on as to whether the trademark they chose with such enthusiasm will survive the registration process. That is why, when you find yourself in the “proceed with caution” zone, you should seek expert legal intelligence and guidance to steer you along the path that will serve you best. 

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