I often am called upon to work on trademark issues, many times only after the advisor has received a cease-and-desist from a lawyer alleging infringement. I recently asked my partner expert Rachel Lilienthal Stark about these registration issues.
Advisory firms need to be careful when choosing a name (along with logos, taglines and other identifiers) and ensuring that they are protected from being challenged or used by others. She discussed three steps to the registration process.
1. Choosing a name Advisors must realize upfront that the process of choosing a name is both challenging and expensive. We often are asked if it is worthwhile to go through a full trademark clearance and registration process. Our response is: "If you are forced to change your firm's name in five years, would it cost you more, both in hard costs and goodwill, then it would cost to go through the process of selecting a good name and protecting it now?"
As the goal of a new firm is to build both the client base and goodwill of the firm beyond a particular advisor, the answer almost always is that it will cost more later.
The first step to the trademark clearance process is choosing a name. Under trademark law, names that are "merely descriptive" will be refused trademark registration and are considered to be "weak" trademarks. This includes surnames (Stark Investment Management), geographic locations (Princeton Investment Management), or words that are synonymous with a quality of the service or product being provided (Best Advisor).
Of course, other common words used in the name of an investment advisory firm, such as "Investment Management," "Advisors," and "Wealth Management," also are considered to be merely descriptive, but used together with a non-descriptive word, are acceptable.
The other types of marks, all which may be registered, are "suggestive," "arbitrary," and "fanciful." "Suggestive" marks hint at the nature or some aspect of the services, without merely describing them (Longview Investment Management). An arbitrary mark is a word whose meaning has no connection to the goods or services (Piano Investment Management). A fanciful mark is completely made up (Gitvig Investment Management).
