So you decide you want to trademark your brand, and you start looking around for names that sound attractive and coincide with your corporate needs and image. After late night bull sessions with your fellow officers and running your proposal by the bartender at Daily’s, you decide that your company — which makes industrial strength boxes for the discerning consumer — should have a trademark worthy of its product.
You decide to call the company BOX.
Simple, elegant, no-nonsense, the name says it all. You are BOX, like YHWH is the architect of the universe and Madonna is the icon of 80s pop. It not only is what it is, it says what it is, and what it says is unmistakably boxy and smart, not only sharp-edged but cutting edge.
The one problem with your grand design is, of course, that BOX is — to be polite — fairly descriptive. Even in another language it would be safe to assume that pretty much everyone knows what a box is and uses the word (and the item itself) regularly. This creates a dilemma for you, since unlike made-up words (e.g., Yahoo), descriptive marks are frowned upon by the policy interpreters at the PTO. Oh, you may beg to differ when you hear that FACE or BOOK made it to the review stage, but at the end of the day plain vanilla descriptive terms have a much harder time making it out of the office alive.
So what’s the secret to getting a descriptive term made into a protectable mark? Simple Simon says the answer is: word combining. If COW isn’t protectable, try SKINNY COW. If COFFEE isn’t protectable, try PURE BLACK COFFEE. If BURGERS doesn’t pass muster, try KILLER BURGERS. The more words you use, the greater the chance your trademark will be granted.
So what does that mean for BOX? It means you need to find another great word to add to it, for a one-two punch that will stick in consumers’ minds. Although logically this should be easy, the reality is that trade names are like hot URLs, and you will find that most of the obvious names are already taken. Latecomers to the game have to get inventive to come up with a good name for a trademark, which can be a bit discouraging (like finding your real name used by somebody else on Twitter), but do not despair. All is not lost.
In the case of BOX, a quick TESS search shows hundreds of marks in use, including but not limited to the following: Feedbox, Stormbox, Durabox, Shockbox, Chewbox, Juicebox, Aquabox, Superbox, Shelterbox, Smart Box, Hot Box, Busy Box, Jury Box, Inkbox, Cyberbox, Onbox, Singlebox, Hintbox, Onebox, Zen Box, Blackbox, Ultra Box, Viewbox, Cinebox, Bluebox, Yabox, Tool Box, Night Box, Bam Box, Hbox, Sugarbox, Speedbox, Smashbox, Coldbox, Job Box, Fuelbox, Trade Box, Rock Box, Thatbox, Juke Box, Fuse Box, Saucebox, Artbox, Velvet Box, The God Box, The Glitter Box, Out Of The Box, Boxmaster, The Secret Box, Dr. Joe’s Secret Box, Office In A Box, Face Lift In A Box, Captain In A Box, Divorce Tool Box, Bones In A Box, and everyone’s cheesy favorite, Jack In The Box.
Are you daunted? Don’t be. As someone once said, “Hope remains while the fellowship is true.” A smart trademark attorney (like the one who came up with SMART BOX) or marketing team will present you with hundreds of additional combinations to choose from, and they’ll even vet them for you in the market prior to launching your brand. How do you think the 4 Hour Work Week found a title? That’s why the marketing gurus sit back and rub their bellies after lunch — they get paid to ferret out cool names.
So now that I have disillusioned you in your quest to pick the perfect name by yourself while sitting in your room alone brainstorming, go out and hire a brainiac to do your thinking for you. Don’t box yourself in by going it alone.
I am a commercial litigator and intellectual property lawyer in Orange County. Although my practice encompasses a wide variety of business disputes, I have a particular fondness for, and am prone to wax philosophical on, the subjects of copyright and trademark infringement in music, literature, art, and film.