How to balance creativity with legal strategy to protect your brand

Trademark Law0 comments

Attention is currency.

Because of that, almost every business owner, regardless of industry, spends a lot of time thinking of creative ways to stand out.

And while creativity is a necessary tool in the business owner’s toolbox…

I worry that all this time spent on creative thinking may lead to less time for critical thinking about things like legal strategy.

(Because, let’s face it, anything that involves legalese tends to be a lot less fun!)

Of course, you need to make yourself known if you want to stay in business and that takes a lot of creativity and strong marketing skills.

But the last thing you want is to spend all the time and effort carving out your space only to lose it all because you failed to consider the legal consequences of your choices. 

The trick is learning how to balance creativity with legal strategy so you can protect your brand.

And it’s actually not as hard as you might think.

**But before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Choosing a strong brand name

The balance between creativity and legal strategy can start even before your business does.

In fact, I would argue if you haven’t started your business yet, you’re ahead of the game.

The reason being:

Anytime you name anything for your business, including your business name itself, you want to go way past marketing tactics and consider naming from a legal perspective.

At least, you want to do this if you ever hope to have a successful trademark registration.

So, whether you’re naming your business or another brand asset like your signature offer, podcast, newsletter, etc., you can start the creative process of brainstorming…

While still considering the legal side of things.

Here are 7 questions to help you do that:

  1. What’s being named? 

This can be a simple description. You just want to describe what it is and what it does.

For example

“A podcast where I talk about my coaching strategies”

  1. Who is the target audience for the name? 

Now you can get specific. List out everything you know about your audience from gender and age group to marital status and geographical location. 

  1. What feelings do you want the name to evoke? 

Don’t be afraid to pull out that trusty thesaurus if you need to!

  1. Are there any internal naming guidelines to consider?

If your company has established guidelines, REFERENCE THEM!

  1. Are relevant domain names available?

Sometimes, checking domain availability is all you need to do to realize the name you’re dreaming of isn’t going to work, and you need to choose a different avenue.

  1. Are there any key considerations to consider from your brand strategy? 

Again, if there are established guidelines, REFERENCE THEM!

  1. Are there competitor or peer names you know you want to stay away from? 

Now, this question is KEY! 

You want to make sure you’re staying away from names that are likely to cause confusion for your clients or customers between you and another business. 

Check out this deep dive into the role likelihood of confusion plays in trademark registration.

You can bookmark this post to refer back to each time you have a new brand asset to name so you can always balance your creative efforts with legal strategy.

Just remember that this isn’t an exhaustive list.

Once you answer the questions (and anything else that comes up during brainstorming), you should have a couple of names you’re happy with.

The next step is to work with a trademark attorney to run a search and check that your name(s) are actually available to use.

Deciding when to register your trademark(s)

Once you have confirmation that your trademark (or a few of them) are available, your first instinct may be to file a registration application as quickly as possible.

But you might want to slow down and consider another piece of the legal strategy puzzle first:

Have you formed a business entity yet?

This won’t apply to every business owner’s situation, but most of the time, you want to form a business entity before you register your trademark.

Because when you submit your application for trademark registration to the United States Patent and Trademark Office (USPTO), you have to indicate who owns the trademark. 

That is the individual or entity using the trademark in commerce (or who will be using the trademark in commerce in the case of an intent-to-use trademark application). 

A business entity is essentially an organization that one or more people form to conduct business. 

Business entities include sole proprietorships, partnerships, Limited Liability Companies (LLCs), and corporations.

They provide a layer of protection between your personal assets (think your home and your car) and your business-related liabilities and debts. Because you have no personal liability for the business’s financial losses, your liability is limited. 

Which is the major reason most people choose to form an entity when they start a business. 

Now, if you were to file a trademark application as an individual and later form an LLC, you would have to reassign the trademark application to the LLC to ensure the USPTO’s records are accurate and that the chain of title for the trademark is clean.

Note: “Chain of title” = public records that track ownership of a registered intellectual property asset from the initial owner to the present. These records are used to establish ownership status and must be kept up-to-date to protect and preserve intellectual property rights.

As you might imagine, reassigning the trademark adds additional time and expense to the trademark registration process.

And if you fail to follow through, someone else could actually attack – and cancel! – your registration.

For that reason, most business owners choose to form their entity first and file their trademark application(s) after so that they can indicate the business entity will own and use the mark.

(But, of course, you always to chat with a trademark attorney about what makes the most sense for you and your business.)

Trademarks versus trade names

If you’ve got your entity sorted (or you’ve decided to register your marks as an individual), you probably want to know which of your trademarks you should register first.

Like I mentioned before, there are so many marks you can have, including:

–Business name






And so on.

Most business owners choose to submit a registration application for the business name first since that’s the mark you use most often.

If you’re actually using it as a trademark, that is.

Believe it or not, there’s a difference between your trade name and your trademark.

Which means, your business name may NOT actually be your trademark.

A trade name is defined in Section 45 of the Trademark Act as “any name used by a person to identify their business or vocation.”

You register your trade name with your state to conduct business there. It serves administrative and accounting purposes and is used to sign contracts.

If you’ve registered your trade name as a business entity, it probably includes an entity designation, like LLC or Inc. 

Your trade name could also be a DBA, which stands for Doing Business As – also known as a Fictitious Business Name here in California.  

Each state actually has different trade name requirements. 

And, it’s important to note that in many states, registering your trade name doesn’t actually prevent other businesses from operating a business under a confusingly similar trade name. 

Yikes, right?!

Your trademark, on the other hand, is a word, phrase, symbol, design, or a combination of those things that identify your goods or services in the marketplace. 

Unlike a trade name, registering your trademark with the USPTO gives you exclusive rights to that registered mark in all 50 states. 

That means you can prevent others from using the mark (or a confusingly similar one!) anywhere in the US by sending cease and desist letters or pursuing other causes of action in state and federal court. 

Your trade name can only function as a trademark if it’s USED as a trademark.

Using your trade name as a trademark

Not sure if you’re using your trademark properly?

Here’s a 5-step checklist for proper trademark use on your website:

  1. Check your trademark symbol.

The ™ symbol is used for common law marks that represent goods or services that are not federally registered with the USPTO, including marks whose registration is pending. 

The ™ symbol and the word “trademark” are interpreted as broadly covering both product marks and service marks. 

So, in the case of unregistered marks, the ™ symbol always is correct.

The ® symbol is used for marks registered with the USPTO. This symbol can only be used once federal registration is granted (applying for a trademark isn’t enough) and can only be used in connection with goods and services listed in the federal registration. 

The proper trademark symbol provides notice to third parties that may deter them from using the mark and can also provide evidentiary benefits in any potential infringement suits.

  1. Check where your Trademark Symbol is.

The ™ or ® symbol should be placed immediately following the mark. 

The standard is to place the symbol in superscript in the upper-right-hand corner, or in some cases, in subscript in the lower right-hand corner.

  1. Check your trademark symbol frequency.

A trademark symbol does not have to be used every time the mark is used throughout a web page. 

Instead, use the symbol in the first instance the mark is used, in the most prominent use of the mark, or in the website footer.

It’s best practice to use the trademark symbol at least once per web page in which the mark is used. 

Placing the trademark symbol in any static representation that is repeated on every page is also a good idea (for example, trademark notice in the website footer).

  1. Check that your trademark is used as an adjective.

Your trademark should be used throughout your webpage as an adjective (e.g., a word that describes the traits, qualities, or number of a noun). 

Trademarks should never be used as nouns (e.g., a person, place, or thing), verbs (e.g., an action word), or possessives. 

  1. Check that all trademarks are included.

If your website has a trademark notice in the footer or on a standalone webpage, make sure all trademarks are included.

A trademark notice will list all trademarks (this can be common law or registered) and note that they are trademarks of your company.

Once you’re confident you’re using your trade name as a proper trademark, you can proceed with filing a trademark application.

Addressing trade dress

If you feel like the scales have tipped slightly to the legal strategy side, this is where we tip back to the creative part of protecting your brand.

Since your first trademark registration will likely be your business name, we need to talk about the different forms this could take.

(Because trademark protection extends beyond words, phrases, and even logos.)

Enter Trade Dress.

Trade Dress is the total image and overall appearance of a product that often includes features such as size, shape, color, color combinations, textures, graphics, and even sales techniques defining a particular product. 

It’s the “look and feel” of a product or service that distinguishes it from the competition. 

In order to be registered with the USPTO, your trade dress has to be both distinctive AND nonfunctional.

Distinctive = a consumer must recognize the trade dress as a reflection of the company’s brand and an indication that the product or service comes from that company.

Nonfunctional = its sole purpose must be ornamental or aesthetic. 

Some fun trade dress examples that have been successfully registered include:

–Atmosphere of an Apple store 

–Design of the Coca-Cola bottle

–Shape of Hershey’s kisses 

–The lifesaver’s hole 

As you build your brand, this is where you get to flex your creative muscles the most and think outside the proverbial box. 

There may be brand elements that differentiate you from the competition that can be protected.

Even if they’re not the standard word, phrase, symbol, design, or a combination of those things, you could still create trade dress that’s entitled to trademark registration. 

Protect your brand with a holistic approach

I say this, even as a trademark attorney:

You can protect your brand the most if you take a holistic approach that considers your assets from both a creative and legal perspective.

Thinking outside the box is your best defense against trademark infringement and a market presence you can securely hold for as long as you want to keep your trademark active.

But also, consider the legal implications of developing and successfully registering your trademark(s).

And don’t forget to consult with an attorney during the process.

I’m here to help when you need it.  

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I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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