What's in a name?

More than you imagine.

We can help you avoid a trademark opposition and with
trademark oppositions.



 

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Branding : Brand, company, service, product names, naming conventions, and how to choose and protect a Mark (brand name).


Steps to create a safe name and limit the chances of infringement or refusal:
(be sure to read this page first)


I can help and become involved at any step below at my normal hourly rate. ~ rob.

The following are not all-inclusive and only the most basic steps to take to create a safe name and limit the chances of infringement or refusal.

Step 1:

You first create a list of attributes for the name, and try your best not to think of names that 'sound like' other big players in your industry, or for that matter any player in or connected with your industry - or a related industry.

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.

Step 3:

Next, to save time, you narrow down the candidates to a more manageable number, say 10 (or as many as you wish).

Of the 10 or more, 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, or contain an identical term.

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.

Google has indexed just about every name there is for the most part worldwide, including un-applied for and unregistered names of those with "common law rights" that will not appear in any trademark registry, which is what makes Google a valuable trademark clearance tool.

Common law rights stem from mere use of a name, and one with earlier common law rights can at any time Petition to Cancel a registered trademark, or make you stop if you have no registered trademark.

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.

Speaking of possibilities most overlook, be mindful that the goods and services need not be identical nor even similar to create confusion and trademark problems.

Be aware that a trademark (Mark) and its goods are services are always treated as a whole or one thing, a unit. Therefore a Mark + its goods and services = The Mark.

Many trademark objections are based upon the goods and/or services being "related and complementary" rather than identical or even similar.

You might want to contact me to discuss other marks that are or could be "related and/or complimentary" to yours, and for a better understanding of the concept of related and complementary marks.

A challenge or objection based on Marks being related and/or complementary can be extremely difficult since "related and complimentary" can often easily be argued both ways, endlessly, and if litigated, at tremendous time and expense.

Therefore always consider your mark and its goods and services as "a whole" and always consider similar marks that could be related and complementary as well as those that are similar or identical as you attempt to clear your Mark candidate.

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 Mark is to be used internationally, or involve a similarly named website, you should also check the other World trademark registries, some of which are here.

If the name and all the variations are clear after the above, I suggest you search for additional potential 'common law' uses and this can be done by searching online phone directories, business listings, and trade show event attendee 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:

Check and be sure that the name you choose has a matching dot com url available so you can register the domain name of the same name. This might cause you to to go back to step one if the domain name is already in use or taken or unavailable.

Step 6:

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, and the very same issues that later cause serious or fatal trademark problems.


Quick FAQs on names and naming:

We're just a start-up and don't have the time and money for this.

Oh yes you do since you probably don't have time or money for this.

Why go through all of this? Please be sure to read this page first


 
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