Top 4 Legal Considerations in Branding

In Blog by Shannon Montgomery

One of my goals when working with a new business client is to help them approach branding not only from a marketing perspective but from a legal perspective. In fact, the legal aspects of branding are arguably as important if not more important than the marketability of the brand. Because what’s the point of marketing something that isn’t legally protectable?

Although there is plenty we could get into when it comes to monitoring your business and brand today’s article focuses on the top 4 things you need to know before deciding what direction you’re going to go with your business and brand.

  1. Your branding must be distinctive

Not everything is eligible for trademark protection. Generic or descriptive names are not going to qualify for trademark protection. From a legal standpoint that means you won’t obtain federal trademark protection for your brand name. Practically speaking, it means that someone else can come along and use a similar or the same name for their business. Boring and generic (no offense) names aren’t going to qualify for trademark protection. You really need to get creative when it comes to branding your business and products. Not just for marketing reasons, but so you can get the protection your brand needs.

From a legal and policy standpoint, we don’t allow generic things like “juice” or “brown bag” to be trademarked, because it wouldn’t make any sense for one company to have the rights to a commonly used term. This would put a huge damper on the market. I know it is enticing to want to use a name that helps the consumer easily understand what it is you do and sell, but from a trademark perspective, it doesn’t make much sense. Spend the extra money on marketing and connecting your brand name to your product or service. Because, as I said, if you name your business Shannon’s Legal Services and someone else comes along and sets up Shannon’s Legal Service right next to it, well there isn’t much we can do to stop them from doing so.

Your brand or trademarks should be suggestive, arbitrary or fanciful. This, of course, is relative to what it is your business does and provides. So while you will likely spend more money marketing and creating the connection between the name and your company in the minds of consumers, all of the invested time and money will be protected with trademark law. So my best advice is to get your best most creative minds together, include your attorney in this, and come up with a brand that will be fully protectable by trademark law.

  1. First to use their mark wins

The United States is a first to use jurisdiction. This means that the first person to use the trademark in commerce (connected with the sale of goods or services) gains the rights to use that mark. There are disclaimers to this of course, but the general idea is that you want to be the first to use something. And, if you’ve fallen in love with a brand name and see someone else is already using it, running to the USPTO to file for a trademark isn’t going to help you.

What qualifies for use in commerce depends on if it’s a product or service. If your product is ready to be sold-goods exist and is in stock then you’re using the mark. If it’s a service, typically having a website with a true offer to provide the service will qualify. At this point, you can apply for your trademark and you probably should. There are some caveats to that as well and I’ve discussed these in past posts (link types of apps post) so again, this is a good time to get with your attorney and determine what the next steps should be!

  1. It isn’t about what you think it’s about what the consumer thinks

You found a name you love, you do a little google search and find that it’s taken. So you think, eh I’ll just change this letter and this and bam-I have a new and different business name. Unfortunately, under trademark law that isn’t how it works. While sure sometimes a slight change can create a totally different commercial impression, it’s rare. When you’re coming up with your brand name your concern must be whether or not the consuming public would confuse your brand for another. The test for trademark infringement is whether or not the use of the trademark is likely to cause a large enough number of consumers to be confused about the source or affiliation of the goods or services.

It isn’t about what you think or feel about a brand name, it is all about the consuming public. So, step into their shoes. Put your brand on the shelf next to all the others, and ensure that you stand out!

  1. Last but not least, use the proper symbols with your branding

Symbols? You know the TM or the ®, you should use these when using your newly chosen brand name. The TM should be used immediately. This denotes that you don’t have your registration in place, but that you are serious about protecting your brand and your marks. Since the majority of people don’t necessarily know the difference between the two symbols, using the TM can act as a warning sign to other businesses and brands. It is likely to steer people away from using anything that is similar to your brand name simply because they don’t understand the TM. And that is perfectly fine with me if it means your brand is safe! Once you’ve taken steps to register your marks with the USPTO you can begin to use the Ò. The R stands for registration so don’t use it until you have that registration certificate…


Clearly, I have not been able to cover every little detail that needs to be considered when choosing what direction you are going with your brand. But, if you take the above 4 things into consideration you will be starting out with your best foot forward. Have questions? Shoot me an email at and let’s chat!


Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.