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More than you imagine. We
can help you avoid a trademark opposition and with
Smart methodology Systematic approach Entirely online
Serving
the world
or SHOP AROUND (unendorsed)
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Branding : Brand, company, service, product names, naming conventions, and how to choose and protect a Mark (brand name). |
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Reasons to create a safe
name for a company, product or service - for a trademark - or just to
use in business. Company, product and service naming today is trickier than ever due to the Internet, globalization, and the mergers of multinational corporations. On the Internet it's usually not long until someone in the world finds your new name, and if that name happens to infringe on the rights of another, you face the possibility of a trademark infringement law suit. A trademark infringement law suit often begins with a demand to cease and desist use of your name. Your name is a trademark or 'Mark'. The cease and desist order typically is a letter that you must timely respond to or face the consequences the cease and desist letter describes. Generally a cease and desist letter demands that you cease all use of your name and eliminate everything with the name on it in 5 days or face legal action. The amount of time you have to stop all use varies, yet not dramatically. Creating a safe name, and one that's good for marketing, and one that has an available URL, and one that also may need to meet other criteria, is a long, painstaking process where cutting corners only results in increased liability.
Create and use brand, product, company and service names with trademark laws in mind, and you win. If you do not, you really might lose everything with the name. A safe and well-researched name will limit the chances of being accused of infringement or facing an opposition or law suit. A smart choice of the exact name and goods and services you apply to trademark will reduce the chances of a refusal by the trademark office and the name never being allowed a trademark registeration. I spend a lot of time helping people that did not do naming properly - and helping them keep their name when they face opposition, more common than ever.
I
did my own naming safely and still had to defend myself. At least I
could win - and the reason is I was smart in the beginning - when
I chose the name.
/rob cummings/ Steps to create a safe name and limit the chances of infringement or refusal: The following steps are not all-inclusive and just the basic steps to take.
Step 1: Names that sound like others, or have the same connotation, create trademark infringement problems. I strongly suggest that you read about the DuPont Factors and likelihood of confusion now to begin to understand how names can be similar to others and cause a trademark objection. When you've read about the DuPont Factors just down to the red, click your browser back button to continue here. Step 2:
Next you create a list of
possible name candidates that may easily be over 100 possibilities. This
provides a library of potential name candidates, and though it may take time
initially, saves time in the long run. Next, to save time, you narrow down the candidates to a more manageable number, say 10. Of the 10, you GOOGLE each candidate as it is spelled, and as it could be spelled, thinking of every possible way it could be spelled. If you find no results, you move on to related names that could have the same connotation, sound or meaning. This overcomes one of the main reasons names (Marks) are accused of infringement i.e. the names look alike, sound alike, or have the same or a similar connotation. Be very creative in thinking about every other way the name could be spelled, and similar names with similar connotations, and document all those you searched. You might want to contact me to suggest other names that could have similar sound, meaning or connotation at this point unless you're very confident that you have come up with each and every possibility and been very diligent. I often think of possibilities most overlook. Step 4: When the name is cleared in Google you start a search at the US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) with the same list of names and variations you used in your Google search. Continue to document your findings. It is also extremely important that you have read and entirely understand the meaning and concepts of the DuPont Factors. If the TTAB shows no Oppositions to your name and all variations, then you move on and search the applied for and registered trademarks at the USPTO and do just as you did with the TTAB searches. If the name and all the variations are clear after the above, I suggest you search for 'common law' uses and this can be done using switchboard.com to search phone directories and business listings. If the name and all the variations are clear after the above, I suggest you next search exhibitor lists of all directories of trade shows in your industry or that could relate to your industry. Step 5: Finally, if all is clear in the above, you should get a Thomson & Thomson Comprehensive Trademark Search Report and evaluate that trademark search report with someone who truly understands trademarks, and, if at all possible, a highly qualified trademark attorney and a company, brand, product, and service naming specialist (which could be me). People contact me to evaluate names before application since I think differently than most trademark attorneys, often uncovering issues the best don't recognize.
We're just a start-up and
don't have the time and money for this.
Why go through all of
this? Please read the next article below.
Have a trademark problem?
Click here
Avoiding and resolving
trademark, brand, product, service, and company name problems.
Trademarks rely on
commerce which is fluid and ever changing, so what may be safe today may
present problems 5 or 10 years later. There are ways to be safer. Many brand naming firms (companies that develop brand, product, service names), law firms, in-house counsel, marketing directors, and brand managers overlook these facts (in layman's terms):
Naming and names that become strong brands are governed in commerce more so than law, so even the best trademark or Intellectual Property counsel may overlook the marketing and commerce-related aspects - features, opportunities, risks and liabilities - we will identify. Oppositions based on names can be disastrous, and we help avoid them. To prove that oppositions to names (which are law suits) are based in commerce more than law, see the Dupont Factors now - then come back here. You may be a bit surprised about what really is in a name - risk and reward. Though it rarely makes the News - the millions of dollars successful companies spend to keep their brand and product names - and defend them - is shocking - yet understandable once you understand naming and trademarks. Cummings Design has created names for companies, products and services over 31+ years, and none had trademark problems, other than our own that was won. Did you know you can fairly easily lose your name (and owe others)? Trademark
opposition or cancellation often comes as brands become famous - the
worst possible timing - and not always very famous, just slightly 'more
famous'. What most don't realize is that companies must oppose and petition to cancel trademarks and trade names - registered or not - to comply with legal doctrines.
Is a company you know opposing in your industry? Avoid a trademark problem from the start - and reduce the risk. Casual company, brand, product service and/or domain naming can result in far greater risk and liability than many consider, or understand. The most important asset of any company is names: company, product, service, brand names, and the biggest mistake of all is overlooking brand name safety.
The wrong name can create
incredible problems, put your entire business at risk, and make you liable
for damages - whether you knew or not has no bearing.
Choosing a 'smart name' is both trademark insurance and good marketing. The
approach we take to company naming, brand naming, product naming,
service naming, and
domain names involves many disciplines and considerations. Backwards approach? Not if you want to keep your name.
Last but
not least, the names and naming conventions we help develop are clever
and memorable, easy to spell, work perfectly for marketing, though first
and foremost the names carry minimal risk (so you don't have problems).
Best company names, product names, service names, domain names are safest, smartest, still creative, most effective, and least risky.
Avoiding
common
naming errors. The two common naming errors we see most often are:
Why
have us help develop your name? One trademark problem can easily cost $10K to $millions, and/or the complete shutdown of your company, plus a law suit with monetary damages, and typically requiring you to donate any inventory to charity. Though trademark oppositions and cancellations rarely make the News, they are happening all the time - and more so when companies become famous. Most hire us for name development to provide the greatest assurance in making the best choice of name with all aspects considered. Since many take naming too lightly, we do more in resolving trademark problems (that never should have happened) as opposed to helping create new names. We
don't have naming in our budget. Ideally, a name should be memorable, easy to spell (and difficult to misspell), seem 'familiar' when written or spoken, and be available as a trademark and a domain name. There are numerous other factors and aspects that should be considered very carefully. Many overlook the importance and value of choosing the right name for their company, its products and services, and the potential liability that could easily result by inadvertently choosing the wrong name(s). One primary goal
is to develop a competitive naming strategy.
A
poor choice of names can result in critical liabilities.
In the trademark problem solving we've been doing over the years, we have seen companies build highly successful businesses only to (years later) face serious and oftentimes insurmountable trademark problems costing $500,000 and more in legal fees - just to keep the name - and nothing more - and only if the outcome is positive. Companies with large intellectual property budgets can create costly and protracted legal problems that last for years - all based on your trademark. Trademark
problems are often overlooked until they become a problem. Trademark problems always involve owners and staff, and take incredible amounts of time and effort. For the most part, the chances of having a trademark problem can be minimized and/or avoided - though it all starts with the choice of name - and the careful and methodical process by which that name is assessed. A good name is an absolute necessity, and keeps problems away. Careful analysis combined with creative thinking and thoughtful consideration of every possibility is critical to successful naming. In the process, we:
To understand the domain registration misspelling issue, enter microsift.com (rather than microsoft.com). To see a protracted case, search for Windows v Lindows. There are many others that never appear in the Press. Trademark issues are seriously considered with:
Why go through so much trouble for just one strong name? Of many, the most compelling reason to choose the right name is to be able to stay in business. Sounds dramatic, yet it's completely true. A name (also known as a a mark) has strength or weakness on its own, however, that strength, weakness or vulnerability is directly tied to and inseparable from the description of the goods and services associated with it. The perfection of the name along with its associated description of goods and services is critically important to reducing risk and enjoying all of the benefits a strong name can provide. What are weak names, and why are weak names risky and vulnerable? Most people do not realize, for example, that an application for a trademark for 'Best Price' could easily result in a trademark opposition from 'Best Buy' - or a Petition to Cancel years after, or a civil law suit in Federal Court - even though the two names are seemingly dissimilar. Most
also do not realize that a trademark registrant could cause a business
with no aspiration to get a trademark right out of
business - and usually after a cash-draining and years-long legal battle. What
does it mean to 'use a mark as a trademark'. Why does it matter?
How
will my name show up in search engines, and does that matter? Why
avoid a generic or common name? Why
worry about potential meanings? For example, the word 'match' is either something that works well with something else (a perfect match), or that thing you strike to start a fire. 'Single' could be a single unit, a person who has no partner, or a cut from a music CD. Everything should be considered in the naming process. We work with you and:
Once the name or naming convention is determined, we can further assist with:
What about tag lines and positioning statements? After we develop and 'clear' the name, we can help you develop positioning statements (also known as lock-ups or tag lines) that safely define your business and its offerings while providing competitive advantage. Ready
to get started and/or have us analyze your names?
Contact Rob for details on naming, branding, and trademark issues. Purchase naming services online. To see why we may be your best choice in naming, see services also available. Learn more about the Trademark process. Thank you for visiting, hope this helps.
/rob cummings/
Have a
trademark problem?
Click here
Clients and attorneys
are saying great things and great things have been happening in company,
brand, product and service naming - and
trademarks... "Really, really impressive work. Thanks so much
for this." "Thanks so much for pointing out the risk
associated with the Mark they proposed we change ours to, and also for
scaring the crap out of me." "I have spent thousands upon thousands with attorneys, and the money spent with you was
well worth it!"
"I
ran this by a trademark attorney who agreed with your assessments. He said
you seem to have a good grasp of these matters ;)"
"Thanks Rob. I agree with your points. I think we make a good team... seeing
"Your
Opposition is brilliant. I appreciate the whole thought process, the way
you grasped the problem, and how you distilled the allegations to the
simple truthful essence. I feel very confident in filing it, and thank you
so much."
"They filed the withdrawal today. Thank you for all the help and input you provided. You definitely know trademark issues and can draw a good strategy for the resolution."
"I just finished reviewing your work and I must say you are an excellent researcher! You seem to pay a lot more attention to detail than most IP lawyers would, you clearly have a passion for what you do." "I am encouraged by your research and thoughtful
analysis, and love the fact that
there's at least a chance we could keep the name." "Just wanted to express my appreciation for
everything that you're doing. Really love the work, the thought, the
strategy. Totally awesome. Regardless of how this turns out - you're
making an unpleasant experience much easier. (Kind of like a good
dentist!!)" "Impressive work. You're providing really good value. Thank
you!" "All the thanks go to you Rob, we never could have done it
without you!" "Just a quick note to thank you for your help. You were
genuine, pushed me when I needed a push, and patiently waded through my
"venting" at the end. Your assessments were honest and on-target, and I
appreciate it." "I really appreciate all your help with this matter. Instead of
me mucking around and slowly coming up to speed on the issues, with your
help, I was able to get a quick and very helpful understanding of the
matter and what would be good to do. Again, I really appreciate it." |
