When choosing a name for a fund, there are a number trademark-related questions to consider. Giving thought to these issues early on can help you build a strong brand and avoid legal disputes down the line.

Is your venture capital fund name a trademark?

The term “trademark” generally includes any word, name or symbol that a person or company uses to identify and distinguish its goods or services from those of others, and to indicate the source of goods or services, even if that source is unknown. The name of your venture capital firm will generally be a trademark.

What makes a name a strong candidate for a trademark?

A word or name will generally fall in one of five categories along a spectrum from weak to strong: generic, descriptive, suggestive, arbitrary and fanciful.

  • A generic term is the common or class name. A generic name says “what you are,” but it does not differentiate “who you are” in the context of your business. In the context of venture capital funds, terms like “Investment Fund” would be generic terms that can never be trademarks.
  • A descriptive term may describe a quality, characteristic, function, feature, purpose, or use of your business or its services. At the time it is initially used in the marketplace, a descriptive term cannot be protected as a trademark. However, over time a descriptive term can acquire what is called a “secondary meaning” and thereafter can become a trademark that indicates a single source of services. Usually this takes several years of substantially exclusive use of the term. This category of marks includes names comprised of a geographic location term (such as “California” or “Silicon Valley”) plus a generic term (such as “Ventures” or “Fund”). So for example a fund manager’s use of “Silicon Valley Ventures” fits this category. It won’t be initially protected, but it might gain “secondary meaning” with the passage of time and, later, gain the ability to become protected as such.
  • A suggestive term does not immediately convey something about you and your services, but it requires imagination, thought or perception to reach a conclusion as to the nature of your business and your services. Suggestive terms are on the “inherently distinctive” side of the spectrum, which means that they can be protected as trademarks from the outset, without the need to acquire distinctiveness or “secondary meaning.” This category of marks would include names like “Future Fund”.
  • An arbitrary or fanciful term is generally the strongest candidate for a trademark. An arbitrary term is an existing word that has meaning in general but no meaning in the context of the services or goods then proposed for trademark, while a fanciful term is a coined word with no prior meaning. Like suggestive terms, these can be protected as trademarks from the outset.

Depending on context, a single term can fit in various places along the spectrum. For example, “espresso” would be a generic term for a beverage. “Espresso” would be descriptive for a venture capital fund that focuses on coffee companies. “Espresso” may be suggestive for a venture capital fund that focuses on opportunities in Italy. Finally, “Espresso” may be arbitrary for a venture capital fund name that was picked only because the founders like espresso, where there is no relationship between the fund and espresso.

Is the name available for me to use?

If you have picked a generic name for a fund, it is probably available under trademark law for you to use, but you would not be able to gain exclusive rights in the common term. If you have picked a more distinctive name (descriptive, suggestive, arbitrary, or fanciful), a clearance search can help you assess whether the term is available. While you can do some preliminary searching on your own with an Internet search engine and using the United States Patent and Trademark Office (“USPTO”) website available at http://tmsearch.uspto.gov/, it is a good idea to work with an experienced trademark attorney to conduct the search and interpret the results.

In the U.S., a comprehensive trademark clearance search would investigate not only the USPTO records for similar marks used with related goods/services, but would also investigate the state trademark registries, business name directories, Internet search engines, and potentially other sources as well. It is important to consider unregistered uses in the marketplace, because trademarks rights in the U.S. can begin to accrue when a trademark is first used, even if the trademark is not registered. In trademark infringement cases, courts will look for which party has priority in trademark rights and then apply the subjective “likelihood of confusion” test. A similar “likelihood of confusion” test is applied by the USPTO in determining whether to grant a trademark registration and assessing whether two trademarks are conflicting. Keeping this “likelihood of confusion” test in mind, an experienced trademark attorney would look for confusingly similar marks (not just identical marks), as well as goods/services that are related such that the relevant public might expect them to emanate from the same source as your services (even though those goods/services may not specifically entail a venture capital fund).

Should I try to register the name as a trademark?

Registering a name as a trademark is not compulsory, but registration comes with many benefits. A federal trademark registration is evidence of your nationwide and exclusive right to use the name as a trademark in the context of your services. A registration may block later-filed applications to register confusingly similar trademarks. A registration allows you to use the ® symbol, and it may deter others from adopting similar names. The registration will generally have a priority date (seniority date) set by the application filing date, so there is a benefit to starting the process early. A federal trademark registration can be very helpful in your ability to stop others from using and registering similar names as trademarks, and it may be helpful in your defense against claims of infringement and related demands that you change your name.

What entity will own the trademark?

Because a trademark indicates a particular source of goods or services, a single entity will generally own and control all related trademarks. For example, your venture capital firm may own all of the trademarks associated with the venture capital firm name and all of the names of venture capital funds that the firm operates, even though those funds are distinct legal entities. But there are alternative ways to structure trademark ownership, in particular where there is a “unity of control” among various legal entities. There are additional legal considerations to take into account when deciding which entity will be the owner of trademarks and which entity will use a name under a trademark license from the owner, so it is best to discuss these aspects of trademark strategy with experienced legal counsel.

I’ve registered my name as a trademark, now what?

Obtaining a registration for a trademark does not mean that trademarks are “checked off” the list never to be considered again. At a minimum, there will be maintenance and renewal filings required in order to keep your registration alive. In the U.S., a filing is due between the 5th and 6th anniversary of registration, and again between the 9th and 10th anniversary of registration, and every 10 years thereafter. These maintenance filings generally require payment of a fee and submission of proof that the trademark is still in use in commerce by the owner for the specified services. It is also a good practice to subscribe to a “watching service” to be alerted to third party trademark filings for the same or similar trademarks, because, if you permit others to use and register similar trademarks, you may make it more difficult to enforce your trademark rights in the future, or even lose your trademark rights altogether. Finally, if there are licensees that use the trademark with permission from the owner, there is a duty of the owner to exercise ongoing “quality control” over the use of the mark by the licensee.

What about international expansion?

Trademark rights are territorial in nature. Generally, the trademark clearance and registration process in other countries is analogous to the process in the U.S., but there are some significant differences in local trademark laws. Notably, unlike in the U.S. where trademark rights are generally recognized on a “first-to-use” basis, many other countries have a “first-to-file” system. An experienced trademark lawyer can help you coordinate an international strategy in the event your fund has international activity.

Conclusion

Even though fund names may not warrant the same level of investment in trademark clearance and protection as “consumer-facing” trademarks, fund names still raise some important trademark considerations. If it would be disruptive to be forced to change the name of your fund, or to be limited in the manner in which you can expand use of your fund name, or to have to tolerate coexistence with others using confusingly similar names for their own related goods or services, then you should consider proactively working with experienced trademark counsel to navigate these issues.

John Paul Oleksiuk
JP Oleksiuk

Posted by JP Oleksiuk