How to Choose and Protect a Name for Your Company and Product

It is sometimes strange and painful for us to see how little effort and creativity businesses devote to the process of choosing and protecting trademarks, i.e. trade names of IT products and companies (hereinafter referred to as “trade mark”, “trade name”, “TM”, “trademark”). It is obvious that any businessman, and especially an IT market participant (and especially those who write their products), will sooner or later face this issue. Therefore, the sooner businessmen, especially IT specialists, think about this, the fewer problems their business will have in the future.

So, let's try to fill the gap and cover the topic of trademarks and their protection. It is obvious that from the programming point of view it is easy to repeat both Tetris and Facebook, and in fact any business schemes that are available to the public. But try to promote your product (whether it is a clone or not) with names similar to these products – the owners (or rather their lawyers) will immediately close you from all resources. On the other hand, if your product becomes popular, then the need immediately arises, or rather the realization arises that it needs to be protected from clones and to make sure that others do not use and hammer your brand into their keywords or LLM. In short – this is the reason why a trademark is one of the main parameters for assessing and costing any IT project during its financing, sale and conclusion of serious contracts.

We decided to provide here our practical recommendations for naming products in any field, but especially in IT, for marketing purposes and toasting the company's value in the US. We do not want to bore you with technicalities, and therefore our recommendations are, first of all, practical in nature. These recommendations can influence both the strategy of protecting your TM at the dawn of its development and at later stages of your business. As they say, as you name the ship, so it will float…

So, “ownership” (and, accordingly, registration of a trademark) is, first of all, the right to exclude, or significantly limit, competitors and other third parties from using this mark in your market of goods and services. Thus, a trademark is both a shield (a good and correct name will prevent “attacks” from other companies) and a “sword” – that is, it will allow you to legally exclude the use of your mark in the name of other goods, including competitors, in search words (whether in Google search or AppStore) and in other advertising.

Of course, the naming process should include checking for a .com domain (though this is becoming less relevant for apps) and, at least for US purposes, checking for conflicts with registered marks at the USPTO (this will probably be a future post).
Well, it is necessary, at least in the most general terms, to analyze the chosen brand from the point of view of its future legal and business life and your ability to “monopolize” it and protect it in the future.

So, technically there are 5 types of trademarks, but the boundaries between them are not always obvious, and the types of marks gradually, like the colors of the rainbow, flow from one category to another: generic, descriptive, suggestive, arbitrary, fanciful.

1. 1. Generic trademarks – that is, trademarks that directly name or designate the product or service itself.

For example, electric car, e-cars — for electric cars, Good Beer — for selling beer, Apple — for selling apples, X-Ray — for selling X-ray machines. Examples of generic marks in the IT sphere:

Generic marks are practically not protected, that is, they are very “weak.” Any general descriptive words that are added to a product regarding its quality and origin – Good, Perfect, Quick, Easy, Funny, AI, i-, quick – all this, as a rule, does not add strength to the mark, that is, they do not become more defensible.

The weakness of a generic brand is that you can't “stake out” words that will prevent others from using those words to describe their product. Of course, the convenience of a generic brand is that it is both the name of the product and, in fact, practically the product itself.

The buyer immediately understands what you sell, it is easy for you to work with SEO and LLM, and you are easy to find in the AppStore or search engine by name. The main problem is that your competitors can also freely use these words in their brands. And if the brand is generic, then you will never get a monopoly on its use, both in the description of the product and in its name. That is, as soon as your product becomes successful, everyone will copy your product and your brand with impunity.

2. Descriptive, or descriptive marks — a mark is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods (TMEP §1209.01(b)). The consumer has no doubt about what is being sold under this mark or the origin of the goods. It is very difficult to get a “merely descriptive” mark registered in the USPTO principal register, which provides exclusivity. That is, a descriptive mark is slightly better than a generic, but not significantly, and the difference is sometimes difficult to discern.

Of course, the assessment of whether a mark is merely descriptive is subjective, and we often have to argue with the examiner about whether a mark leans closer to generic/merely descriptive or closer to “stronger” marks (suggestive). If the former, then you will have to register the mark on the USPTO supplementary register, created for descriptive marks and not giving you the right to exclusive use of the mark, but assuming some advantages in defending this monopoly in the future (which requires significant marketing efforts and actual leadership in the use of terms, a chance of translation to principal if the mark has a secondary meaning). If you can convince in the latter, that is, that the mark is not merely descriptive, then the registration (and therefore the protection of the mark) gets the green light for full registration on the principal register.

A significant exception to the rule is when conducting a significant advertising campaign, with a large marketing budget and the ability to “promote” the brand to “full recognition” (secondary meaning). That is, measures that lead to the consumer associating this descriptive brand specifically with you, and not with other products in the same category (this is called secondary meaning – that is, when we say Facebook, we mean a specific company and product, and not a book of school graduates in the USA). For example, Kaspersky, Dell, McDonalds – also initially “wrong” descriptive brands (“just surnames” also refer to descriptive), but this drawback was overcome by business development and “promotion,” when the consumer no longer associates the product with a “face”, namely with a business, albeit one with the same name. We had to argue against the USPTO's denial by arguing that “Pushkin” (despite the existence of several hundred families with that name in the US) is not just a “surname,” but a “famous” surname. I think my Russian literature teacher would have been proud of us if she had read my “Pushkin is our everything” argument.

Also included in the descriptive category are marks that include references to geographic locations, if the consumer assumes that such a mark indicates the region of origin. For example, you will not be able to register marks such as Florida Oranges or Napa Valley Wine if the product was not physically produced in the specified region. If it was not produced, then such an indication would be considered “deceptively misdescriptive”. Therefore, one must be very careful in using geographical names, especially taking into account protected “geographical indicators” (GI) such as Champagne, Tequila or Bourbon.

We also often encounter situations where the client offers a translation of the brand into a language other than English as a name. The simplest example would be an attempt to register the word Vodka or Vino. The examiner will definitely consider these examples descriptive.

Real examples of descriptive marks in the IT sphere (which actually do not receive legal protection and exclusivity, having received registration, under accompanying circumstances, only on the supplemental register):

• • Advanced Security Technologies – rather descriptive, if not generic.

• • REMOTE CHECKOUT – software for accommodating multiple types of payment

• • QWIKVID – products for video processing (the incorrect spelling of the word Quick and the abbreviation VID from video did not save this brand, and the examiner recognized the brand as merely descriptive)

• • DRAFT TRACKER – software for tracking athletes in sports drafts

• • STORAGEREVIEW.COM – website for electronic data storage

• • BOOKSTREAM – software for managing electronic books

• • NEWSCLOUD – software as a service (SAAS) services for on-line content

• • STANLEY SECURITY GROUP – security systems (Stanley – “just a surname”)

• • CHANNEL MONITOR – web-based software application for tracking real-time product information

This is a great example of how NOT to name a product.

• • INSTANT RESTORE – for data restoration

• • SMART NOTEBOOK – does anyone have any doubts about what kind of product this is?

• • CONTINUOUS CYBER SECURITY SCANNING – I can’t put anything here except a smiley…, so no comments.

• • DATADAEMON – software for data exchange

That is, it is clear that such a name quickly and directly conveys a message to the consumer about what the essence of the product or service is – but this is precisely the reason why the state does not allow you to appropriate a monopoly on such names. That is, you cannot exclude others from using the terms that characterize the product or service.

3. Suggestive marks – marks that use real words, and at the same time, in order to understand the function or purpose of the product, it is necessary to make a certain logical connection between the name and the product (a mark that, when applied to the goods or services at issue, requires imagination, thought or perception to reach a conclusion as to the nature of those goods or services — see TMEP 1209.01(a)). The closest translation into Russian that I could come to is a “hinting” or “suggesting” mark, although this is not entirely harmonious, so we will continue to use the term suggestive here. These are wonderful marks – that is, they receive full protection, but at the same time indirectly indicate to buyers the goods and services. The buyer can either guess by building a logical chain what kind of product it is, or, in any case, having seen the product, will undoubtedly confirm this association (and, most importantly, will remember it).

Simply misspelling a word or missing a letter may not save you and make the mark suggestive/arbitrary (see below) instead of descriptive (Russian vodka, xtension cutter, etc.) or save you from an attack by a similar mark (Google). Therefore, this is precisely the situation where circumstances, your imagination, and the skill of your lawyer can turn the tide of the game in one direction or another. But, more often than not, ordinary mistakes _do not_ save you, especially if the phonetic pronunciation of the mark remains the same.

Suggestive marks are fully protected and very rarely are attempts to refuse registration (mostly problems occur if someone has registered a similar mark first).

For example:

• • Nero-CDRom – Nero (Nero) burned Rome (Rome) – a play on words Rome-Rom

• • Stiff Nipples – air conditioning repair service, probably the most “visual” demonstration of the logical chain between services and the consequences of a well-functioning air conditioner

• • 36.6 is a brilliant name for pharmacies

• • Penguin – for refrigerators (penguin – cold – refrigerator)

• • Pol-kopecky (this is generally a brilliant name for a flooring store – and an indication of the cheapness and the product itself through homonyms)

• • Hawk Eye – camera and software for tracking ball hits in tennis

• • Rogue – a car that stands out from the others with its “rebellious” characteristics

• • Reebok (a type of antelope) – athletic shoes and clothing that hint at speed and agility

• • Google – a derivative of a number with 100 zeros (indicates something big)

• • InvisibleCRM (since there is no such thing as a truly “invisible” CRM, this gives the brand a suggestive tone, in the sense that it works invisibly and does not interfere)

• • Under Armour – sportswear

• • War Thunder — games/software on the theme of war

Selecting suggestive brands requires a significant amount of creative effort, but as we can see from the examples above, it is worth the effort.

4. Arbitrary – words that exist but are not related to the product itself:

• • Bluetooth

• • Blackberry

• • HootSuite

• • Gibraltar Software

• • Banjo Publishing

• • Oxygen Forensics

• • Gaijin Entertainment

Arbitrary marks receive virtually complete protection, but it is important for you to be the first to choose an animal, bird or king, effectively monopolizing the use of such a name in your industry.

5. Fanciful – non-existent (invented) words.

• • Kodak

• • adidas

• • Fozium

• • Agnitum

• • Bitrix

• • Nravo

4 and 5, that is, fanciful and arbitrary, are protected to the greatest extent, but the problem is that for associative perception and recognition of the brand by consumers, the brand of the 4th and 5th type must be “promoted” and an association must be created between the product and the brand (which is initially absent). That is, the Xerox brand itself does not say in any way that this is a brand about copying machines, or that Gaijin or Nravo are games. But, on the other hand, such names immediately receive full protection, and if “promoted” and recognizable, then these brands can be no worse than suggestive brands. It just requires additional funds and efforts to create an instant reflection in the eyes of consumers.

Category 4 and 5 can also include acronyms, but you need to be careful with them. On the one hand, acronyms can be included in arbitrary, but real protection will only come with a large number of letters. Remember that there are only a few dozen recognizable two- or three-letter trademarks in the world – GE, IBM, CNN, ABC, BMW, and perhaps a few more. Therefore, a two- or three-letter mark has no value in itself until huge amounts of money are spent on its promotion, and it is usually problematic to register such a mark – the USPTO adheres to the position that there are a limited number of possible variations of marks with a three-letter combination. Therefore, you need to avoid two- and three-letter abbreviations and not name your products like FIOsoftware – all these are weak brands, although I am still amazed by either the resourcefulness or luck of those who came up with ASprotect (AS is an abbreviation of the name, but a very good phonetic reminder of what needs to be covered in business – that is, at the very least, it is CYA).

Four letters are the minimum for a stamp, if you don't want to have problems in the future. However, for example, we recently had a situation where a four-letter stamp was easily registered in the USA, but it turned out that in other countries and in other languages ​​the name means something “descriptive”, or there is already a registration. Therefore, simply by the theory of probability and based on the fact that the number of letters in the alphabet is limited, 4-letter stamps are also quite risky in themselves.

6. Fangestive Marks.

Here we will allow ourselves a certain frivolity of departure from the theoretical canons of trademark law – given the current practice and utilitarian aspects of trademark registration, we believe that there is a unique, sixth category of trademarks. We call it Fangestive. That is, a mark that combines the characteristics of fanciful – that is, non-existent words, plus the mark itself with its sound, spelling or the imprint that it leaves in the mind of the consumer. Thus, this mark combines the two most important aspects of a trademark – its full protection and, at the same time, such a mark, nevertheless, immediately reflects the essence of the services and goods offered. Several examples, from our point of view, of fangestive marks:

• • The Beatles – Beat in music, and the result was rhythmic “bugs.”

• • Volbeat – perhaps this group used the logic of Lennon and McCartney, but put the emphasis on “volume” (Volume or Vol) plus beat

• • beacherella – that is, beach plus umbrella

• • Nike – goddess Nike, symbol of victory

• • Meater – a combination of meat and metering – a device for measuring the temperature of meat

• • Dealigence – deal and diligence (software and services in M&A)

So, based on the rules above, you need to choose something unique that is not confusingly similar to other brands (because ADIDASoftare may be an interesting name, but it will obviously cause legal problems of a completely different level), that will not cause problems in the future, but at the same time, it will not cause unnecessary problems for your marketing.

And for a good trademark you need to use your imagination… Our advice is to try to find a suggestive, so that some kind of reminder of the product is preserved, and at the same time you will have virtually full legal protection. Imagine that you are coming up with a name for a lie detector and remember the old joke: “I have a lie detector at home.” “What is it called?” “Mother-in-law!” A joke is a joke, but this is how the best product brands are born, and the name “Mother-in-law” would be a great name for a software lie detector, or as they say now – disinformation.

Here we would like to dwell on the necessity and advantages of trademark registration. I think that we will cover the conflict with other trademarks and the registration process in a separate article, but we would like to briefly dwell on the consequences of trademark registration in the USA if the USA is your main consumption market.

In the US, if you use a mark, you become its “owner,” meaning you have a common law mark. So why register a trade name with the USPTO? Let’s look at the main practical points:

i. A registered trademark is what you see, like ® or (R) – it creates a tone of serious company/product.

ii. Owning a registered mark allows you to have a monopoly on that name in a given country (only in the geographic region where the mark actually “operates” or is visible to your consumers), and no one can use it in the names of their products, advertising, or at the federal level without your permission.

iii. A registered trademark limits the rights of others to use this name in search words for traffic or search for irrelevant (other, i.e. non-competitive) or competitive products (we routinely remove clones and “thieves” from the AppStore – sites respond much faster to registered trademarks).

iv. Registering a trademark in the country provides additional opportunities for judicial protection in the federal courts of the United States – and jurisdiction of the federal rather than the state court. That is, in the United States, federal courts are considered more competent and less biased towards “outsiders,” which can mean both foreigners and residents of other states.

v. In the event of a lawsuit to protect a registered trademark, additional damages can be claimed (in the US – triple damages from what was actually proven; a ban on the sale of counterfeit products).

vi. In addition to using a mark as a “sword” (to attack competitors), registration is also used as a “shield,” and if someone challenges your name, they must cancel your registration (which is difficult and expensive) before they can sue you.

vii. Until your TM registration is cancelled, the presumption is that the mark is yours and cancellation of registration (and even suspension or protest against the current registration process) is an expensive process. Plus, registration is a very strong evidence of who owns the mark (and related products/domains/sites) and again, prohibition or seizure of such is a rather expensive process.

viii. In case of filing for registration in a country of the “Madrid Protocol”, it is possible to extend the priority of protection within 6 months after the application to other countries-members of the convention (currently – 130 countries) retroactively from the date of filing for protection in the United States.

ix. Registration also constitutes “constructive notice”, i.e. public notice (“I didn’t know it was a mark” no longer works) and proof of bad faith and willfulness, and can be of great importance in calculating the amount of damages in case of infringement.

x. A good chance of getting your attorney's fees back, at the expense of the losing party, in case of winning for infringement of the registered TM (under normal circumstances, in the USA even the winning party pays for its attorney).

xi. One of the first questions investors ask is: Do you have a registered trademark? Registration with the USPTO adds significant points to your business acumen.

Surprisingly, I had to explain to the client for quite a long time why old Barbie was making claims against him and not against other “clones.” You will be surprised, but the answer is very simple – no one is interested in “elusive Joe,” and they “attack” (or “scientifically” – send cease and desist letters, remove you from the AppStore, sue, etc.) when you become successful and start earning money. So why start a business with the presumption that you you will not be successful or build a business on the principle of “failure of success”? As with your personal reputation and name – take care and value your secret business creation – and its good name.

We advise you to choose a name for your company or product that is more creative than your competitors, especially those with a large budget for IP lawyers. Protecting your intellectual property, including your trademark, is an important foundation and vector for your business development. We, in turn, are always ready to direct your creativity in the right direction and help with registering and maintaining your brands.