“Can I trademark this?” I get asked it all the time—with all the simplicity, sincerity and curiosity that comes along with a question to which there is hope for a simple, off the top of my head, answer…

This free legal information is made available courtesy of Counsel to Creativity.

Not every identifier you use for your business can be trademarked. It’s disappointing. But, better to be aware.

Here are 5 questions to ask yourself about your business’s name to get a quick and dirty assessment of whether it can be protected as a trademark.

1. Is it generic?

You want the answer to be NO. There is a spectrum of what set of words or what images can actually be trademarked and used only for identifying your business. Generic marks—marks comprised of a word used for its dictionary definition—lie on one end of that spectrum and cannot be protected as trademarks.

2. Does it literally describe what I do?

Ah, blast! Once again you want the answer to be NO. Descriptive marks—marks that literally describe the good or service (or some readily known quality of the good or service)—lie right next to generic marks on our spectrum of distinctiveness. Trademark law values distinctiveness. You can see why this would make sense: we want to be able to clearly identify a business in the market, and we want to leave generic and descriptive words for everyone to use for their intended purpose. Intellectual property is always striking that balance and distinction. Marks that are descriptive require that you demonstrate proof that your market has associated the mark with your business as the source of its goods or services. (That is called secondary meaning.)

So, sub-question: If the mark does describe what I do, has it acquired secondary meaning? You want the answer to this question to be YES.

3. Is anyone else using it?

Hopefully the answer to this question truly is NO. You want to at least do two things to see if and how the mark is being used by others. Search the US Trademark Office database here. Google it.

The Trademark Office search will give you some preliminary information about the availability of the mark. But only preliminary information. This is what a trademark office search for a word mark actually looks like:

*{“CKQ”}ouns{v}l* *attorney*)[bi,ti] AND *{“CKQ”}reativ*[bi,ti] AND live[ld]

*{“CKQ”}reativ*[bi,ti] AND “045”[cc] and live[ld]

*{“CKQ”}reativ*[bi,ti] AND (“045” a b 200)[ic] and live[ld]

Any questions? Yeah, that’s what I thought. Kind of exhausting—it reminds me of HTML or CSS code.

You cannot simply plug the words into the Trademark Office’s system and find everything that may create confusion. But, you can start there.

You also want to Google the words. It tells you two key things: is there someone using an unregistered mark? Is the rest of the world already using this combination words to talk about your goods or services?

Again, this is the quick and dirty analysis here. I recommend hiring an attorney to do the research and analysis for you—that’s where to spend the money on your trademark. (I had a client—and also my own aunt—tell me that the Trademark Office’s website made her cry. Don’t let it defeat you; there’s help.)

4. Is anyone else using something like it?

This is the same question as above, only broader. Trademark protects not only the actual mark, but all marks confusingly similar to it. Hence, why the trademark search looks the way it does. It catches words that sound and look alike or are in a different variation.  Again, I recommend getting the opinion of an attorney here who knows how the trademark office has handled different kinds of marks and how to compare your mark to other existing marks for similarity.  The legal conclusion is often different than the conclusion of the business owner.

5. Am I actually using it?

You gain rights to a trademark through use. Plain and simple. You cannot register a trademark unless it is in actual use. (There is such a thing as an intent to use application; however, the mark isn’t actually registered until the trademark office receives and accepts proof of use.)

Domain name registration causes all kinds of confusion here. Purchasing your domain name does not invest you or your business with trademark rights. It’s a completely separate thing—and right now there’s no integration of domain name searches with trademark searches. You have to actually launch that website with your business name and what you provide clearly on it to gain any trademark rights in the name.

This has happened. Probably more than I know. At least one client of mine had mistakenly thought that she could co-exist with another company of a very similar name because they were both allowed to register domain names and their target clients, although in the same general industry, were different. She launched her dream business and was immediately sent a cease and desist letter. (Nice congratulatory gift, huh?) She needed to change her name and rebrand. It cost her thousands of dollars. And she was heartbroken, not to mention freaked out by the serious, attorney-prepared letter she’d received.

Do it. Ask yourself these 5 Trademark questions.

Then go forth and register.  I’m here, and I do research and give opinions on registration.

To help you, I’ve created the e-course, The 2 Things You Must Do to Protect Your Brand, and I’m giving it to you for FREE.  It’s my gift to you so that you’ll be fully informed and ready to protect your brand and your business.  Download it now.

Don’t rest your brand on the hope of not running into a trademark issue.  Get informed and ready to fully protect your brand now; it’s FREE.

Drop by the comments below and tell me what your biggest aha! was about your trademark.

And if you learned something valuable from this post, like it or tweet it and help out another entrepreneur.

Looking to change your business to better suit your life? Rebecca Prien also provides business coaching and business model design services through Ompreneur | The Yoga of Entrepreneurship.