The name you pick for your company or product may or may not become your company’s most valuable asset.  For many companies that is precisely the case.  It all depends on how frequently customers/clients find and choose you based on the positive experiences associated with your trademark –whether their own experiences or those of a respected source.

For this reason, it is often worth investing time and money in your trademarks. Specifically, the time/money needed to: (1) select a good trademark; (2) register your trademark; and (3) enforce your trademark rights, if the need arises.  The first of these, selecting a good trademark, is a broad topic. Suffice it to say here that you want to pick a mark that is not infringing a third party and is legally strong.  

What makes a legally strong trademark?

What makes a good business name from a marketing perspective is often the opposite of what makes a good mark from a legal perspective.  Specifically, there is a nice marketing advantage to choosing a business name that describes your product in the name itself.  From a legal perspective, descriptiveness works against you.  In fact, the more descriptive, the less protected your mark is from other people using it against your will.  If it is a made up word, i.e. completely non-descriptive of anything that exists outside your company name, then your legal rights are going to be the strongest.

There's no clear-cut best guide to pick a great trademark, as it involves some strategic thinking with both your marketing team and your legal team.  For example, under the right conditions, it may make the most overall business sense to choose a business name that is generic or descriptive, and thus not likely to receive the advantages mentioned above.

How do I know if my trademark infringes a third party’s trademark?

You can be found liable for infringing someone’s trademark without intending to infringe, without causing them any demonstrable economic harm, and without having substantial similarity between your trademark and theirs.  That is because the determining factor of whether or not you are infringing another person’s trademark is whether a consumer is likely to confuse their trademark with your trademark. 

A vast body of law defines this “likelihood of confusion” and it is not always obvious or predicable what marks will be ruled as infringing and which will not.  The best that a trained trademark attorney can do is provide a legal opinion based on how a court has viewed analogous infringement claim situations.  With that, there is no guarantee that you will not be threatened with a lawsuit on the basis of your trademark infringing someone else, or even lose such a claim, even if the attorney’s opinion was otherwise. However, getting a legal opinion of the availability of a trademark is still a good idea, because a solid legal opinion will provide a better understanding of your infringement risks, even if it will not eliminate them.  Many companies use that legal opinion as a basis for starting over with a different trademark if the one they picked originally simply has too many risk factors.

For those who lack startup capital to afford a full legal clearance and legal opinion, becoming acquainted with the concepts of infringement risk and doing their own searching will be better than doing nothing at all.