For Elpha we answered the "Top Four Naming Questions" I receive. Note, this is not legal advice but rather insight from many years of creating, vetting, and helping clients select names.
1) What is your definition of a good name?
The absolutely gotta-have-its: A good name is easy to say, difficult to mispronounce, memorable, defensible, and appealing.
Beyond these characteristics, your name will ideally have something special about it, which makes it uniquely rich and relevant for you, your business, or your values. It is this special quality that gives your name the ability to grow and function as the seed of your brand. Your name should be that key element that resonates outward, like a pebble dropped into a pond. Your name should be rich and full of possibility, able to stay fresh and keep growing in new creative directions.
In order to function in this way, your name will ideally have at least some relevant, intrinsic meaning, but not be so narrow (geographically, descriptively) that it limits your ability to grow. And unless you have deep resources for advertising and/or lots of time – rare for a start-up – this is a powerful argument for thinking very hard before choosing a meaningless, random, arbitrary, or totally made-up name.
2) I already own (or bought) the URL, isn’t that enough?
No, URL ownership and trademark protection are two parallel but very different systems. Owning and using a URL is not enough to protect your name as a trademark, other than providing some Common Law rights through use.
In fact, many founders register or buy a URL and start building their brand around it, only to find out, too late -- after they get sued or receive a cease-and-desist letter -- that they can’t use that name for their planned business, because someone else has prior trademark rights.
It is unwise to spend a lot of (or any) money buying a URL, until you’re sure you can actually use that name as a trademark. (This is just as true, whether you plan to actually register your name as a trademark, or not.)
Before buying a URL, try and get some confidence in your potential to use it for your planned goods or services. Our automated search service (www.namingmatters.com) rates trademark risk; combine that with some internet searching of your name and goods to check for Common Law use.
3) Is it worth registering my name as a trademark?
A Federal trademark grants you important rights in the United States to use and defend your name, for the goods or services you have described. Trademark registration gives you an exclusive right to use the name in your area of business.
This means that if others attempt to use your name for similar or identical goods, or a name that is similar to your name for similar or identical goods, you have legal remedies to object to their use and stop them.
But trademark registration is slow and not cheap, with filing fees per name and per trademark class, and often the need to hire an attorney. And some names are not expected to last long enough to get through a trademark process, for example if your name is for an event, or a seasonal product. In these cases, filing a Federal trademark application is probably not a good use of resources.
4) What is the difference between that “superscript-TM” I see, and the “circle-R”? Would the “superscript-TM” help me, if I decide not to file for a trademark?
Yes! At the very least, once you are confident that you will go forward with your name, you should place a superscript TM to the upper right of your name – on your web site, on packaging, on your pitch deck, on the first mention in print – to assert ownership.
If you decide to go through the trademark registration process and succeed, you’ll be able to replace the TM with the coveted circle-R, indicating that you now have a registered trademark. But even if you choose not to register, you will have claimed ownership of your name with the TM superscript, giving a clear hands-off signal to potential users of identical or similar names for identical or similar goods.