Can I Trademark That? What You Need to Know Before Filing

Before you pour money into branding, marketing, and packaging—not every name is eligible for trademark protection. The last thing you want is to build a brand around a name that won’t hold up legally.

As an experienced trademark attorney, I help entrepreneurs protect their brands the right way—so they don’t waste time (or money) on names that won’t be able to register. Here’s a quick breakdown to see if your brand name is actually eligible for trademark protection:

Is Your Trademark Unique?

The most important factor is distinctiveness. If your brand name is made up of common words used to name your product (like “Body Scrub” for skincare products), it’s too generic to function as a trademark. A strong, trademark-eligible name stands out and is unique to your business. Most importantly, a strong mark identifies The strongest trademarks are "fanciful" (completely made-up, like Xerox) and "arbitrary" (existing words used in unexpected ways, like Apple for computers).

Does Your Brand Name Only Describe Your Product?

Trademark protection is meant to cover names that go beyond simply describing what you sell. If your brand name merely describes what you sell (like “Cold & Creamy” for ice cream), you’ve got a problem. Descriptive names struggle to get trademark protection because they don’t create a strong brand identity. Some descriptive names can be registered, but they require secondary meaning, which can take years and lots of money to prove. To be clear, some brand names are eligible for protection but are not strong marks and therefore offer a limited scope of protection. Weak marks can be harder to enforce against infringers.

Is Someone Else Already Using It?

Even if your exact name isn’t taken, a similar name in the same industry can still block your trademark. This is where DIY searches fail—just because the name looks available doesn’t mean it is. A similar name can block your trademark if it’s likely to cause consumer confusion—even if it’s spelled differently. Trademark applications are subject to a likelihood of confusion standard that compares two marks based on sight, sound, meaning, the relatedness of the goods/services, the strength of the mark, and other factors. For instance, if you’re opening ‘Sunbeam Candles,’ you might not find an identical trademark, but if ‘Sunbeam Wax Works’ exists in the same industry, it could still be a problem. A professional trademark search can save you from legal headaches down the road by carefully reviewing any instance of a likelihood of confusion.

Which Class(es) Are You Using the Mark In?

Trademarks are registered by category (a.k.a. class). There are 45 different classes comprising products and services. Your name might be available in one but taken in another. Choosing the right class is critical—it’s not just about having a great name; it’s about securing protection in the right industry. For example, Dove can exist as a brand for both soap and chocolates because trademarks are registered by class. However, if two businesses sell similar products under similar names, there’s a risk of conflict. Sometimes, the products don't have to be similar to still cause confusion. Trademark law is nuanced, and choosing the right class is just one piece of the puzzle. Working with an experienced attorney ensures you’re securing the right protection from the start.

Want Peace of Mind?

While DIY searches may seem like a cost-effective solution, they often miss critical conflicts that can result in office actions and your application may ultimately be rejected A professional trademark search and legal analysis will ensure your brand name is fully protectable and won’t face rejection down the road.

Let’s find out if your brand name is legally strong before you invest in it! Book a free discovery call at www.shailaw.com/consultations.