Choosing Trademarks and Clearing Them

The spectrum of distinctiveness.

Trademark law sorts marks into five categories, from strongest to weakest. Where a name falls on this spectrum decides how much protection it gets, and whether it gets any:

1. Fanciful: invented words

   Words created for the brand, with no prior meaning. These are the strongest marks.

2. Arbitrary: real words with an unrelated meaning

   An ordinary word applied to unrelated goods. Strong protection, because no competitor legitimately needs the word to describe their own product.

3. Suggestive: hinting at qualities

   A word that suggests, rather than describes, the product's nature, requiring imagination to connect. Protectable without proof of secondary meaning, but closer to the line.

4. Descriptive: describing the goods

   Words that describe an ingredient, quality, or characteristic. Protectable only with proof of acquired distinctiveness, that consumers have come to associate the term with a single source (15 U.S.C. § 1052(e)-(f)). The USPTO may accept five years' substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness, but that showing is discretionary, not automatic, and it cannot save marks that are deceptive or functional.

5. Generic: the name of the product itself

   The common name for the product category. Never protectable as a trademark, no matter how much money is spent promoting it.

Choosing a name.

Descriptive names are popular because they explain the business immediately. For the same reason, they are harder to protect: competitors may need the same words to describe their own products, and the USPTO may refuse registration without proof of acquired distinctiveness.

Considerations when choosing a name:

• Prefer invented or arbitrary names. They generally clear searches more easily, register more reliably, and are easier to enforce.
• Screen for obvious conflicts early. A free search of USPTO records and the web can rule out names with obvious conflicts before more money is spent.
• Look beyond exact matches. Similar sound, meaning, and overall commercial impression can all create likelihood-of-confusion problems.
• Check domains and social handles. This is a practical test rather than a legal one, but a name that cannot be used online is harder to build.
• Be cautious with place names and surnames. Marks that are primarily geographically descriptive or primarily merely a surname face additional grounds for refusal.

Clearance searches.

Clearance is the search for conflicting marks and the assessment of whether a mark can be registered, done before a brand launches. The depth of the search should match how much the business plans to invest in the brand:

• Knockout search. A quick screen of the USPTO database and the web for obvious conflicts. It is inexpensive and useful for ruling out names early, but it does not clear a mark.
• Comprehensive search. A professional search of federal and state registers, business names, domain names, and common-law uses. This is the usual basis for a significant investment in a brand.
• Clearance with opinion. A comprehensive search plus a written legal opinion on registrability and risk. A documented opinion can also be relevant evidence of good faith if a dispute arises.

When the search finds conflicts.

A conflict on a search report does not end the analysis. The usual questions are: how similar are the marks, how related are the goods, how strong is the other mark, is it actually in use, and in which markets? Options include choosing a different name (often cheapest), modifying the mark or limiting the goods, seeking a consent or coexistence agreement, or, where the other mark is weak or unused, proceeding with a calculated risk assessment. Ignoring a known conflict can be used as evidence of bad faith or willfulness if a dispute follows.

From clearance to registration.

Once a mark is chosen and cleared, federal registration at the USPTO proceeds by application, either based on current use in commerce or on a bona fide intent to use the mark (15 U.S.C. § 1051(a)-(b)). Filing currently costs a $350 base fee per class, plus possible surcharges if the application is incomplete or uses free-form goods-and-services identifications; the $350 base fee has been in effect since January 18, 2025. An intent-to-use application cannot mature to registration until the applicant shows actual use in commerce. The USPTO examines the application, publishes the mark for opposition, and registers it if no one successfully objects. Federal registration brings nationwide constructive notice (15 U.S.C. § 1072), a presumption of ownership and validity (15 U.S.C. §§ 1057(b), 1115(a)), and access to federal court remedies. The ® symbol may be used only with federally registered marks; ™ may be used to claim rights in an unregistered mark.

Common misunderstandings.

"We registered the LLC, so we own the name."

A state business-entity registration is not a trademark right. Another company's trademark can still prevent use of the LLC's name in commerce.

"We own the domain, so the trademark is ours."

Domain registration confers no trademark rights. Trademark rights come from use as a source identifier.

"Nobody else is using it on Google."

A web search is not clearance. Conflicting marks live in USPTO records, state registers, and unindexed common-law use.

"Adding a word avoids confusion."

Not reliably. Likelihood of confusion looks at the overall commercial impression; small changes to a similar mark often change nothing legally.

Next: Registering and Maintaining a Trademark, on the steps from application to registration, continued use and maintenance.

Sources.

• 15 U.S.C. § 1051: use-based (§ 1051(a)) and intent-to-use (§ 1051(b)) applications; no registration until actual use is shown. govinfo.gov (Title 15 PDF) (retrieved September 30, 2026).
• 15 U.S.C. § 1052(e)-(f): refusal of merely descriptive marks; five years' substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness, at the Director's discretion. uscode.house.gov (retrieved September 30, 2026).
• 15 U.S.C. §§ 1057(b), 1072, 1115(a): benefits of federal registration, including the registration certificate as prima facie evidence of ownership and validity, nationwide constructive notice, and presumptions in litigation. § 1057 (law.cornell.edu); § 1072 (law.cornell.edu); § 1115 (law.cornell.edu) (retrieved September 30, 2026).
• 15 U.S.C. § 1114: infringement of registered marks; likelihood of confusion, mistake, or deception. uscode.house.gov (retrieved September 30, 2026).
• USPTO, "Summary of 2025 trademark fee changes": base application fee $350 per class (TEAS Plus/Standard eliminated), effective January 18, 2025. uspto.gov (retrieved September 30, 2026).

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This guide is general information, not legal advice. Law checked through September 30, 2026. See the Disclaimer.