201510.02
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Choosing a Business Name in Silicon Valley

There are a lot of “interesting” startup names in Silicon Valley these days. Following in the footsteps of bit.ly, Flickr, Spotify, Hipmunk and Lyst is leading to a staggering amount of startups with names such as Naborly, Phiinom, Naytev, and NamastHey. Choosing a name for your business is not just about finding a name that is attractive and something you will be proud to build your brand around; you also need to choose a name that is legally sound, and that is more complicated than many believe.

Here are four potential pitfalls to avoid when choosing a name for your Bay Area startup:

Pitfall Number One: Infringement

The most important wrinkle to choosing a business name is trademark infringement. The idea is simple; if your name is too close to an existing business name in the same or a closely-related industry, you could end up in litigation for trademark infringement. The law, however, is highly complex with a host of details that become even more complicated as you cross state boundaries.

Within California, the established system works likes this: a name is considered “deceptively similar” to another name if it is identical to that name, or if the differences between the two boil down to:

  • Capitalization, super/subscript, or other changes of font or typeface (e.g. H2O vs. h2o),
  • Spelling versus pronouncing a given letter or number’s written form (e.g. 6Underground vs. SixUnderground),
  • Business identifiers (e.g. SmithBarnes LLC and SmithBarnes Incorporated) — except “and Company” is not considered a business identifier for this purpose,
  • A pluralized form or a possessive ‘s’ (e.g. Menlo, Menlos, and Menlo’s),
  • The use of an article or conjunction (e.g. The Fishing and Hunting Co. vs. A Fishing or Hunting Co.), and/or
  • Punctuation, symbols, or spacing (e.g. SoHeaven.ly, So Heavenly, and @SoHeavenly; Gotcha! vs. G.O.T.C.H.A.) except when the change creates a marked difference in pronunciation (e.g. GothamNow vs. Got Ham Now?).

On top of all of this, the Secretary of State’s office can opt to declare a given business name “deceptively similar” (or not) to another existing name based on their discretion. Given the sheer number of startups around, this hurdle alone can be so difficult to overcome that there are startups out there devoted to helping other startups find good names that are not potentially trademark infringing.

Pitfall Number Two: Descriptive Names

Simply put, the Unites States Patent and Trademark Office (USPTO) will not grant a trademark to any name it deems “merely descriptive.” Thus, no matter how clever you think it is, you cannot name your new Silicon Valley messaging app building company “MssgingApp,” or even “Messenger.” There must be something about your name that keeps it from being used as a generic description of a class of things.

Note that this is true even if your name is wrong; you cannot name your messaging app company “WeFeedApplesToGoats,” either. Similarly, you cannot name your company just a surname; no “Franklin’s” or “Bonneville’s” allowed. (You can, however, combine these two effectively: “Franklin Messenger” is a perfectly legitimate name, as it effectively separates your company from all other “Franklins” and all other “Messengers”.)

A trademark is also considered “merely descriptive” if it consists only of a geographic area alongside the name of an item commonly known to come from that area. For example, “Silicon Valley Apps,” “Dungeness Crab,” and “Florida Oranges” may all be deemed merely descriptive, while “Maine Oranges” and “Manhattan Bonsai” might not. Note that geographic descriptions that are not true are not viable trademarks; attempting to acquire the name “San Francisco Potato Chips” when your company is based in and operates out of Los Angeles (using potatoes from Idaho) is likely to be rejected.

Pitfall Number Three: Scandalous or Immoral Names

The USPTO also strongly dislikes names that “[consist] of or [comprise] immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” This includes using the likeness or signature of any living person (or any living or dead President of the United States whose spouse is still alive) except with their express written permission (or the permission of a deceased President’s spouse).

Pitfall Number Four: Using Country, State, or Municipality Names

Finally, you cannot simply name your company “Los Gatos”, “California” or “USA”. You must have some part of your name that completely distinguishes your company from any widely-known location. (While it is not technically part of the law, the USPTO has been known to apply this statute broadly to any widely-known proper noun, having rejected names such as “Mona Lisa”, “Eiffel”, and “Hirohito” in the past.) You can name your company after fictional or historical places (that no longer exist), with companies having successfully trademarked names such as “Shambala” and “Cipangu”.

It is easy to see why the process of selecting a business name results in quite a bit of fancy copycatting of successful ‘name memes’ such as the ‘.ly’ or the ‘ify’; it is actually very difficult to brainstorm clever names that are going to stick in the minds of consumers while also avoiding all of the aforementioned pitfalls. If you cannot come up with something that is unique and is likely to be successful, sticking to an established pattern might be the best way to choose a name for your Silicon Valley startup. 

Jeffrey Miller is a Palo Alto business attorney and member of the Palo Alto Area Bar Association (PAABA). He provides skilled legal guidance for startups and established businesses in the Bay Area. He can work with you on planning and forming the right entity, name selection, drafting and reviewing contracts and agreements, and any other legal issue that may arise. To find out how he can help you with your business needs, call attorney Jeff Miller today at (650) 321-0410 or email him at jeff@jeffmillerlaw.com.