When launching a business or a new product, one of the most important initial considerations is the name of that business or product. The name is the first thing a potential consumer comes into contact with and what the consumer will remember. The name is the vehicle by which all marketing will travel and will be repeated over and over in advertising, on social media and websites. It is, therefore, one of the things that businesses strive to “get it right.”

Usually, this is something that is left to the creative types — those who understand market research, focus groups and creating all-around brands. However, even at the early stages, businesses should pay attention to the legal side of branding to make sure they “get it right.” If you are launching a new business or a new product, be sure take into consideration the following areas.

Will the name also be the company name?

If so, in addition to any trademark concerns, it is imperative to check that the company name is available in the state where the business will be formed. Most states do not allow two businesses to have identical names, regardless of the goods or services they offer.

Is the name distinctive?

Generic or descriptive terms are great at one level because they immediately tell a consumer what a product is or does. Words like SOFTWARE, CLOTHING, DEGREASER and the like merely tell consumers what they are buying. Words like these that describe a product, its features or functions are not broadly protectable as trademarks, which means competitors could also use those same descriptive terms with their goods. Distinctive marks provide stronger protection against others using similar marks but do not immediately convey anything about the goods or services, i.e., Tesla, Apple, etc.

Is it clear here?

Before adopting or seeking registration of a name, it is good practice to conduct a trademark clearance search in the United States. A clearance search can help discover whether there are any lurking issues that could present future problems or act to entirely bar use of a given trademark. A clearance search will take in existing federal and state trademark registrations and unregistered uses of the same or similar trademark to provide a picture of what the risks associated with a given trademark are. With this risk assessment in hand, a business can make an informed decision on whether or not to adopt a given mark.

Is it clear there?

Trademark law and trademark protection is country-specific. Therefore, if a business has international aspirations, it is important to look at key international markets when initially adopting a trademark. By conducting international clearance searches early, a business will find out if a mark is available in all its key markets and avoid situations where a product might have one name in one country and another name elsewhere.

Register it

Once a business decides on a name, it should start taking steps to secure its rights by applying to register that trademark. While trademarks ultimately relate to specific goods or services, in the United States, a trademark application can be filed on an Intent-to-Use basis, which means a business can start the trademark registration process before it has goods in commerce.

Though showing evidence of actual use of the mark will be required before a registration certificate is issued, the Intent-to-Use option provides businesses with a means to start the registration process and secure rights early. While the process may vary country-to-country, international trademark registrations should also be filed as early as possible in order to preserve rights in relevant countries.

Take-Away

A successful new name or product launch requires coordinating both the creative side of marketing and legal input in order to ensure a business adopts a name that is memorable and protectable.

If your organization needs assistance in this regard, I may be reached at mark.nieds@henlaw.com or by phone at 239-344-1153.