Home » Publications & Outlines » Milena S. Mischev, New York Trademark Lawyer, What's in a Name

What's in a Name . . .



A new company has made a decision to launch a new product, for which a new brand name has been chosen. Often, in order to make sure that the name has not already been taken, companies search the Internet to determine if someone else uses the same name. In addition, many will also examine the online records of the U.S. Patent and Trademark Office (USPTO).


In most cases, if the name seems available, the brand owner will call up their trademark or corporate attorney to instruct her to file a trademark application for registration of the new name. In some cases, the new brand owners are even ready to do the filing on their own. The USPTO website seems pretty self-explanatory, right?


Well, not exactly.


Normally, new companies will focus on the development of their new products and services and how to best commercialize them in the marketplace. Unfortunately, businesses often tend to overlook another crucial aspect of their company’s property, i.e., the intellectual property they have in the name of their product(s) and/or service(s).


Selecting a name


Frequently, a new company will choose a name which is somewhat suggestive of the new product or service they would like to market. Let’s say, “PEACE FOR ALL” for non-for profit charitable services, may provide the consumer public with some insight about the company’s charitable services, but the mark is not exactly weak and has good chances for registering on the Federal Register. On the other hand, the mark “PEACE FOR ALL” is not a strong mark either. The best marks are fanciful or arbitrary marks. These are terms, which meaning does not relate to the product or service at all. For example, “Apple” has nothing to do with computers or electronics. Selecting a mark that is arbitrary, fanciful or suggestive, but is not plainly descriptive, can provide a product or service name, which a company can successfully enforce if any competitors enter the marketplace using the same or similar name.


Initial clearance of the proposed name


After coming up with a brand name, the first important step is to ensure that the name is free and clear to use. Certainly, checking domain name and corporate name availability at the corporate name registration level is appropriate. Additionally, a company should make sure no other state trademark registrations or federal trademark registrations have been filed or registered on the same or similar mark. Working with legal counsel to perform a legal clearance search of the names is something that should strongly be considered by any new company to make sure that their proposed business and product names are available for use. In our example, to clear the name “PEACE FOR ALL” is necessary to not only search for the wording itself for also for derivatives like “PEACE 4 ALL.”


Extending the search


Full trademark searches provide additional information about the availability of the proposed mark and can potentially save time and money to the brand owner. The full trademark investigation includes not only searching the Internet and USPTO records but also exploring state trademark registrations, other common law (unregistered) uses of the same or a similar mark, and domain names that incorporate the proposed one. Conducting a full availability search evidences due diligence on part of the brand owner.


Smartest Strategy


Before going ahead with applying for protection of a new brand, no matter how big the business really is, the best strategy is to start with a clearance search in order to make sure that there are no prior rights in such name, which would give rise to potential conflicts in the future. Performing a clearance search and picking a distinctive name, is company’s free pass to using their mark in commerce. It is a guarantee for creating a strong brand and will provide adequate protection to prevent others from infringing upon this trademark owner’s rights.