Your product’s name is one of its most valuable assets. Choosing a great name may accelerate the brand-building process, but choosing the wrong name may create liability. Choose wisely. Below are steps you should follow from a legal perspective when naming your product or service.
1. Carefully Select Your Mark
Building a strong brand for your product or service can be facilitated with trademark registrations, but not all product or service names are entitled to trademark protection. As an example, a mark such as “car wash” is not protectable when used in relation to a car wash or detailing business. Descriptive or geographically descriptive names, such as “Annapolis Software Consultants” are also difficult to protect. Better marks may be those that are arbitrary in relation to the product or service (ex: Apple Computer), completely made up (ex: Doritos), or suggestive (ex: Quickflex).
2. Request a Clearance Search
Having a clearance search performed by a lawyer will help determine if another company already has priority rights to the name you’ve chosen or may in some way limit your rights. You will want to do this before your business invests a considerable amount of time and money into a certain name.
3. Consider an Intent-To-Use Trademark Application
If you anticipate that there will be some time between marketing preparation and use of a name you may want to consider an Intent-To-Use Trademark Application. This will qualify you as a first user of the trademark if you (1) are the first to file the trademark application for the mark you want to protect and (2) put the mark into actual commercial use and complete the registration process by filing a statement of use and paying an additional fee.
4. Obtain the Domain Name and Any Similar Variations.
Consider all the different variations of your name and obtain the domain names for them. Gathering domain names that represent many different variations of the name you have chosen will help reduce problems with potential copycats or cybersquatters in the future who, among other things, can damage your reputation.
5. Start Marketing the Name Now!
After you’re sure that your name is not infringing anyone else’s trademark, you should start using the name you’ve chosen in commerce right away. In the United States, common law trademark rights arise on first use within a product category or geographic market. This means that if you start selling products under your preferred trademark now, you may be able to claim ownership of that trademark without formally registering it with the U.S. Patent and Trademark Office. Such rights, however, will be limited by geographic scope and actual commercial use. You can put others on notice of your trademark by using the designation “TM” after it.
6. Obtain Federal and State Registration.
While this step is not mandatory, it has several advantages. Most states, including Ohio, will register a trademark. However, a state registration only grants exclusive rights within the specific state. There are many more advantages available through federal registration, which:
- Discourages others from using or attempting to register confusingly similar marks by making the mark easy to find in a trademark availability search
- Provides nationwide notice of ownership of the mark as of the registration date
- Grants the right to sue in federal court, which means increased remedies if infringement were to occur
- Gives a presumption of validity that is hard to overcome if challenged
- Grants the right to use the ® symbol
- Allows U.S. Customs and Border Protection (“CBP”) to block imports infringing on your mark at no additional cost to you (requires a separate registration with CBP)
- Provides a basis for registration in foreign countries, should you choose to go that route.
Conclusion
Names are an important way in which the law protects a business against various unfair practices. It’s important to make sure that the name you have invested time and effort into creating and around which your business will build its reputation, is one that will remain exclusively yours.
Gene Friedman is a partner at Gertsburg Licata in the transactional practice group. He may be reached at (216) 573-6000 or at [email protected].
Gertsburg Licata is a full-service, strategic growth advisory firm focusing on business transactions and litigation, M&A and executive talent solutions for start-up and middle-market enterprises. It is also the home of CoverMySix®, a unique, anti-litigation audit developed specifically for growing and middle-market companies.
This article is for informational purposes only. It is merely intended to provide a very general overview of a certain area of the law. Nothing in this article is intended to create an attorney-client relationship or provide legal advice. You should not rely on anything in this article without first consulting with an attorney licensed to practice in your jurisdiction. If you have specific questions about your matter, please contact an attorney licensed to practice in your jurisdiction.
