Apr 30, 2021
Get A Bullet-Proof Name for Your Business
Make a Good Name for Yourself Without Getting Sued
There are few challenges an enterprise faces that are more serious than choosing its name or the name for its latest product.
If you’ve ever named a child, or a pet, or even a boat, you know how difficult it can be to come up with the perfect choice. With humans, anyway, there is nothing more basic to who and what we are. It’s our Prime Descriptor — the identifier most of us will use throughout life.
If you’re smart, you’ll think especially hard when choosing a name. A lot rides on it.
Picking the best name for a new business, organization, or product is TRIPLY difficult these days because:
- People are so overwhelmed, some can barely remember their OWN names, let alone the 50 or so new names they encounter every day,
- URL-miners have secured rights to almost every web address their name-generating software can think up,
- The Internet has opened a world economy to all of us — now Acme Laundry in Emporia, Kansas, competes for attention with Acme Laundries in rural Ireland and downtown Dubai.
Finding a clear, descriptive name for your company or product that can be used as a web address and that is free from trademark issues — a bulletproof business name — has never been more difficult. (I’ve named a few national brands myself, like the federal program AmeriCorps and the hiring company Staffmark. I truly feel your pain.)
One way to go about it is to do what the big naming companies do (the ones that get upwards of $100,000 to name blue-chip products and pharmaceuticals) by randomly combining morphemes — parts of words — to create an evocative but meaningless name. (Meaning “not trademarked” yet.)
Rather than get into a Phonetics 101 on morpheme combining, head over to WordLab and have some fun. WordLab is an entertaining and free naming site with an array of addictive generators to help you spin out names for everything from pills to rock bands.
“Cleveland, give it up for Creche Noir — sponsored by 24-hour Rediprool!”
Check for Conflicts
It’s easy to fall in love with a chosen name. It’s easy to make a big mistake if you do.
If the chosen name for your entity is legally judged to be in conflict with an already trademarked business name — so that it could potentially confuse a customer — you could pay an expensive penalty in court and/or by having to replace all your branded material from business cards to website to your building signage.
The first place to go to check a chosen name is the United States Patent and Trademark Office. Its TESS system will allow you to check if any word or combination of words is currently under trademark.
Ones marked DEAD have lapsed or been abandoned. Ones marked LIVE are currently registered names.
I am not a lawyer so do not take this as final legal advice. I do have years of experience that have taught me that you can only defend a trademarked name against a competitor in the same business (as narrowly defined by IC code.)
A real-world example: When the real estate marketing firm Zillow was named (two random morphemes) the founders were smart enough to trademark that unique name in more than a dozen business categories as shown in the search detail.
But right there at the top is a company using the same name for organic joint-rolling papers. You can bet that Zillow would shut them down if they could.
However, it’s wise not to chance it. Even if you’re in the right, a competitor’s deeper legal pockets could cause you serious expense and effort. Aim for a name free from potential conflict.
Next step: Type the name into Google. You may come up with a few, or many, others using a similar name without trademarking it.
Then you need to do some serious thinking: Will my enterprise be confused with this other one? Even though not trademarked, has the other entity been using the name so long that they might legally claim “common law trademark” based on established use?
If the answers are “no,” you can move to the last step.
Trademarking Your Business Name
In the past, I have paid trademark attorneys thousands of dollars to take a company or product name through the trademark process. If you have a good lawyer on retainer — or in your company — that’s certainly an option.
The Internet has changed everything though. It has even changed the trademark process for the better.
There are several Internet-based companies that specialize in low-cost filing of trademark. One I have used and liked is LegalZoom. Co-founded by Robert Shapiro, one of the high-profile attorneys in the O.J. Simpson trial, it gives you access to a full array of legal services at a fraction of what a typical law firm would charge you.
LegalZoom offers two ways of filing for trademark protection: Do-It-Yourself and Let an Attorney Take the Lead. The fees at the time of this writing are $249 and $599 respectively.
Trademark Engine offers cheaper prices for a do-it-yourself package but offers no legal advice. Trademark Regal beats all others at $49 plus federal filing fee. Again, though, you get no real legal counsel.
All submissions must pay the USPTO’s filing fee, which can range from $250 to $750.
So, the total cost for filing with an online trademark service and the USPTO will be $300 to $1,350. As I said earlier, I have paid several times that amount going the traditional way.
If you need to save money, you can handle the process yourself with the USPTO at https://www.uspto.gov/trademarks/apply.
I think the extra you’ll pay LegalZoom or another legal entity is worth it, though, just to give you piece of mind. If they see a legal conflict with the name you’ve chosen, they’ll stop you from trying to register it. If you do it directly with the USPTO — and they deny you because of a conflict — you’re out $250 to $750.
Though the registration process is handled easily online and is processed with admirable speed, be advised that the entire trademark process is a multi-year investment.
Once you get your name registered, you have basic protection. However, in a year or so, the USPTO will ask for proof that you are using the name. You’ll need to supply a letterhead, website, advertisement — something that shows you’re actually using the name, or you will lose the trademark.
In all, it’s a two- or three-year process before you have final trademark approval. But even starting the process gives you some legal rights, proving that you have provisional ownership of the name.
Again, I’m not a lawyer and please don’t take this as legal advice. LegalZoom or any good trademark attorney will be able to explain the process to you.
So, what do you do if you don’t have money to spend on a trademark?
First, make sure there doesn’t appear to be any major conflicts with existing names as described above.
Then, simply start using the name. Put it on your signs and business cards and document the date when you do so. It’s not perfect, but established usage counts for something if a conflict arises later.
Further Reading on Trademarks:
http://biztaxlaw.about.com/od/copyrightsandtrademarks/a/trademarkreg.htm
https://www.nolo.com/legal-encyclopedia/filing-federal-trademark-application-faq.html
