Earlier this month CrowdSPRING, an online market place for creative services, identified 10 tips for startups on naming your company. Briefly, the 10 tips are:

1. Think about what you want your company name to convey.
2. Brainstorm to identify name possibilities.
3. Keep the name short, simple, and easy to write and remember. Also consider acronyms for the name.
4. Avoid names that are too narrow or too literal.
5. Avoid decisions by committee but do “test” your name with others.
6. Avoid plain words.
7. Be careful with geographic names.
8. Avoid obscure words.
9. Consider whether you can register a domain and obtain a trademark;
10. Avoid trends.

The 10 tips for naming your company listed above are a good starting point and the advice is solid.  CrowdSPRING elaborates on each of the points in its blog.  In our practice we frequently deal with naming companies that engage us to conduct trademark clearance searches. We also deal with corporate marketing departments in assisting with the selection and protection of products.

One of the issues we face on a regular basis is the desire by product managers and in-house marketing departments – particularly in the tech space – to use descriptive monikers for their software products.  The rationale behind this strategy is that descriptive names instantly convey to consumers what the product or service does. While it is desirable to stay away from obscure words (see tip #8 above), trademarks that create the most value and are easily protectable are generally words that are unusual or made up.

There is inherent tension here in that a descriptive word or a word that instantly conveys to consumers the nature of the good or service costs less to market and promote. In contrast an obscure mark or a mark wholly unrelated to the goods or services (think monster.com) may initially cost more to get consumers to associate the mark with the goods/services.

However, over the lifecycle of the mark, the descriptive mark may very well cost more.  For example, descriptive terms are usually more difficult to trademark. This results in increased legal fees associated with registering the trademark. In addition, because the mark is descriptive it is likely that other companies will use the term with similar goods or services. As a result, trademark monitoring and enforcements efforts may be necessary.  This results in paying attorneys to send out cease and desist letters, monitoring the USPTO database for similar marks and initiating litigation or opposition proceedings when necessary.

In the end, you want a name that tells a good story, allows you the flexibility to grow your brand or product line and is easy to protect and trademark.   Choosing a name that instantly conveys to consumers what you do, may not be the best choice.  If you have questions about the naming process, trademarks, trademark infringement or trademark litigation, contact Chicago trademark attorney Marcus Harris.