A trademark is the first public act of branding for a company.  It is the one branding element that hopefully will never have to change.  A well established brand identity engenders customer awareness, loyalty, association and perceived quality.  In the present market of endless “similar” products and services, company trademarks and the brands they represent are often the most valuable assets a company owns.

However, there are many mistakes a company may make when adopting and beginning to use a trademark for its services or products.  For example, companies often adopt trademarks that will never achieve protection and federal registration.  Moreover, trademarks are often neglected by companies who do not understand the potential damages they can suffer as a result of their own misuse of their trademarks or the unchecked and unauthorized use of their trademarks by others.  Furthermore, a company’s failure to determine whether a trademark is already being used before adoption and use of the trademark may leave the company open for a claim of trademark infringement.  Accordingly, careful selection, clearance, registration, and maintenance of trademarks and constant monitoring of the competition to ensure the trademarks are not being used by anyone else will help a company to protect the value built in its trademarks and minimize the potential for law suits.

It takes an organization with a particular set of values, culture, people, programs and assets to deliver a “product” or “service”.  Therefore, selecting a brand identity (trademark) should be based, in part, on those characteristics of the organization.  A thorough understanding of your product or service, how it will be used, your target market, and your overall objectives, also serve as a foundation underlying the selection of a trademark.  Generating and selecting trademarks can be a creative but disciplined task.  After having laid the groundwork, here are some considerations for successful naming.

A carefully planned strategy, with a step-by-step methodology, will ensure adoption of a successful trademark.  First and foremost, you should identify the long-term business objectives, with the intent to create a name for tomorrow and not just for today.  Spend enough time analyzing the market, identifying opportunities for differentiation and setting the appropriate strategic naming objectives to be used for the name evaluation process.

In developing a name for your company, product, or service, do not rush to a decision because marketing materials need to be printed or your website is ready to launch.  The key in name creation is to think outside the box and not be tempted to play in the comfort zone of your competition.

Naming strategies will vary some, depending on whether or not you are developing names for new brand identities, new product lines, or additions to existing product lines.  As you ponder the launch of a new product or service, consider the following general principles for choosing a new name.

Abstract or fanciful names (those without any obvious descriptive content when it comes to the nature of the product, its use or benefits) are potentially strong marketing and legal properties.  They can create powerful differentiation and provide an extra competitive edge, and in crowded marketplaces this can make all the difference if backed up by products and services of high quality and value for the money.  Precisely because such names lack any descriptive content, they are relatively easy to register and protect as trademarks.  Real or invented words are many times easier for consumers to remember, though they may need to be explained to consumers at launch.

Suggestive names contain a clue about the product or service and are therefore more user-friendly.  Because they are relatively easy to understand, suggestive trademarks simplify the task of positioning the product or service concerned.  Sometimes, though, suggestive trademarks can prove difficult to protect as trademarks.

Initials are perhaps the most difficult form of brand identity in which to create meaning.  A company should avoid the initials route.  Initials lack information, differentiation and personality.  They get lost in the marketplace clutter and they are extremely costly to support and promote.  They are also notoriously difficult to protect as trademarks.

The biggest mistake companies make is being too descriptive with their names.  A name should not attempt to simply describe; it should at least have the ability to suggest the essence (the unique characteristics) of your company- to distinguish it.  To be effective, a name must have brand potential.  A name that is narrow or too descriptive does not have the depth or dimension to become an effective brand identity.

In today’s highly competitive environment, the most successful names over the long-term are often those that are initially the most controversial.  When you select a name, you are looking for something to punch through the marketplace clutter, not add to it.  The strongest brand identities are the ones that transcend the physical attributes of a product or service to form an emotional connection with the customer.

In most cases, the process will continue, following appropriate strategic discussions and goal setting, with the development of tentative lists.  Having set the boundaries through careful pre-planning can control and direct brainstorming without limiting creativity.  A list of 20 to 30 names for example may be developed using both internal and external sources if the project is not confidential.

Next, prioritize the names.  When it comes to evaluating the names, avoid subjectivity.  Prioritize each name against the strategic objectives you set up at the beginning of your process.  Also remember that names that make you feel uncomfortable at first should not be dismissed.  Usually, these are the ones with greater impact and differentiation in the marketplace.  Avoid names with negative associations or inappropriate meanings.  In addition, pay attention to key languages for linguistic issues.  Even if you are solely US-based, you cannot ignore key languages such as Spanish, etc.
Finally, with the top 4 to 5 choices, consider all of the strategic implications of the names and review them against your initial screening criteria developed in the planning stage.

Before involving trademark counsel, there are a number of steps you can take to save time and legal fees.  Names should always be pre-screened for legal availability to avoid the risk of falling in love with a specific name that is not available.  Build in enough time for full legal investigation. You don’t want to rush in this phase and risk missing a potential conflict already out there.  For links to sources regularly used by trademark counsel in this process, including those that will be listed below, you can visit our website (www.BoothUdall.com) and click on “IP VALUE LINKS”.

First, research your preferred name(s) on the federal database to determine whether a confusingly similar mark is already registered, or whether a pending application for a confusingly similar mark has been filed, for related goods and/or services.  You may conduct a search online for free via the TESS (Trademark Electronic Search System) database on the Patent and Trademark Office website (www.uspto.gov).  Click on “Trademarks” and then "Search" and you will be able to enter your name to see if others are using it.  Another free site that is easier to use and provides other advantages is PTODIRECT.com (www.ptodirect.com).

In either case, you will need to give yourself a little education in trademark law to see if there are conflicts in categories relevant to your product.  A trademark must be at least distinctive and not descriptive or the general name of a product or a service.  In addition, a trademark cannot be the same as or confusingly similar in spelling, sound, connotation, or commercial impression to an existing trademark for the same or related product or service.

Also, be sure to enter your name with various spellings, with and without hyphens, etc., to see if there are similar names.  If your mark includes a design element, you will need to search it by using design codes.  To locate the proper design code(s), you can consult the Design Search Code Manual on the Patent and Trademark Office website.  If your search yields an application or registration that you think might conflict with your mark, you should check its status via the TARR (Trademark Applications and Registrations Retrieval) database which can be accessed via the two websites discussed previously.

Next, do a domain name search, not only because you may want to have a website for your new product, but also to see if there are others marketing products under your name or a similar one.  Go to GoDaddy.com for example to check your name.  If your top choices are available, it is worth the small amount of money you will spend to register them as domains early before someone else gets them, even if you do not end up using all of them down the road.

For a new business or brand, you might also want to see if there are any company names using your tentative selection.  You can visit the Secretary of State's website of your home state, and those in Delaware and Nevada for example, to see if anyone has registered your name as a company name.

Last but not least, enter your name in a few popular search engines—Google, MSN, Yahoo!, etc.  Read the resulting listings, even beyond the first few pages, to see how others may be using your name.

Because the naming process takes time and because there are lots of other people developing new products and services all the time, someone may be concurrently working on the same name as you are and you may not discover that fact until trademarks are prescreened.  If so, don't be afraid to start over if you exhaust your list.

Even if the preliminary screening search does not reveal any potentially conflicting uses, it should not be relied upon to conclude that the selected trademarks could be adopted and used.  A comprehensive clearance search and opinion process will provide a realistic assessment of possible obstacles to adoption of a trademark, based on a comprehensive search of most available resources.

The decision on whether or not to conduct formal research will be based on several factors.  Perhaps the most important is the amount of financial risk you will have in naming the product.  If the future of your company or tens of millions in sales hangs on the value of the name, you must be much more careful in its selection.  You would hate to invest large sums in product identification, packaging, advertising, merchandising and other brand building activities only to learn that your potential customers are turned off by the name or that it is confusingly similar to someone else's.  In general, the more at risk, the more careful you should be.  Even if you feel confident enough to forego a clearance search because the trademark has already been in use for some time without encountering obstacles, this does not mean that a search might not uncover significant risk of a challenge to your continued use of the mark.

Thus, in most instances, you should have a trademark attorney conduct a full comprehensive clearance search.  This process will involve independent, comprehensive database searches of federal trademarks, state trademarks, business names, Internet domain names, World Wide Web sites, and the like, including extensions of international registrations seeking trademark protection in the U.S.  Full searches cast a wider net than prescreening searches, not only in the source material search, but in the variations on the mark, and in some cases, the breadth of the related goods on which the marks are used.

If you plan to market your product in other countries, you may wish to have searches conducted in those countries as well.  Unfortunately, there is no single database to search to clear a mark internationally, although there is some centralized searching available based on international treaties and agreements.  Because the process can get expensive, you should start with those countries where you plan to sell either now or in the future.

Another advantage to a comprehensive search and accompanying legal opinion arises in the context of a trademark infringement lawsuit.  A more thorough and detailed written opinion could be useful if the client is sued for trademark infringement, and the plaintiff asserts that the infringement was willful.  An allegation of willful infringement can potentially triple the damages awarded in a case, or allow for damages based on the client’s profits, as well as attorneys’ fees.  In such a case, a counsel’s opinion that the proposed mark would not be likely to infringe could serve as a defense to willfulness.  Also, a defendant’s good faith in adopting the mark is a factor that weighs against a finding of infringement.  A client may even be able to rely on a well-written opinion based on a preliminary knock-out search.

Prepared by Pacer K. Udall, Intellectual Property Attorney
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© 2007 Pacer K. Udall.  All Rights Reserved.