Selecting a company name or a name for a new product is no easy task. Both types of names have the potential to become the company’s valuable intellectual property assets, i.e., valuable brands. A haphazard name selection process, however, may result in legal problems and/or prevent registration of the name as a trademark or service mark with the United States Patent & Trademark Office. Clearly the last thing a new startup needs is a legal dispute involving the alleged infringement by its product name or company name of someone else’s registered trademark. Also, the “wrong” name may well prevent its registration as a trademark or service mark. Registered marks generally have substantially more value than unregistered marks.
Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own. A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter. However, the company’s compliance will generally require it to stop using the mark and transfer any domain name rights, etc. The upshot? The company will have to start over in the branding process.
The following tips are intended to get your company off and running with a viable company and/or product name.
- Do a Google search on the name to see what other companies may already be using the same or a similar name.
- Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks. For Florida, this information can be found here.
- Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed company/product name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark or prevent trademark registration issues. Clearly if you plan to file a trademark registration application for your company/product name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements. This means that your mark must not be confusedly similar to a registered mark, generic, or merely descriptive of the goods or services provided under the mark.
- Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights. Therefore, a minor change in the registered domain name, e.g., by registering the plural form (ABCS) of the registered domain name (ABC) could result in a trademark dispute. The registration of a dot com domain name in particular could signal potential trademark issues.
- The best company/product name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
- Come up with at least three names you like and get the reactions of trusted individuals.
- If you plan to have a logo designed, ensure that there is a contract in place assigning all of the logo creator’s intellectual property rights to your company.
- If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you. In the United States, common law trademark rights are recognized. Additionally, trademark registration requires usage of the mark in interstate commerce at the time of registration.
- Watch out for cultural implications involving your mark if you plan to register it in other countries.
- Consult with an intellectual property law attorney up front to avoid costly problems. A good attorney will discuss potential problems with your proposed names. A thorough mark knockout search should also be considered.
We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to intellectual property law including trademark law. Contact us at 305-279-4740 to discuss your questions on trademark law matters. Doing things right the first time in selecting a company/product name and building your brand could save you some real legal headaches and a lot of money down the road.
Troy & Schwartz, LLC
Attorneys-at-Law
Miami, Florida (305) 279-4740
Where Legal Meets Entrepreneurship™
This blog is for informational purposes only and does not constitute legal advice.
© 2023 by Troy & Schwartz, LLC
