Naming a Product or Company

Naming a product or company can be tricky. On one hand, you want the name to tell customers something about you; but the name has to be unique enough to be protectable (and you want to be careful not to step on someone else's name). The web has complicated the job -- with 30-some-odd million domain names reserved, what's left?

The usual approach is to think about the product or service and develop descriptive names. But descriptive words are usually the worst choice because they are inherently difficult to trademark and most likely to have already been used.

BEST NAMES: Abstract, invented names that evoke a mental image of a product's chief benefit or unique selling proposition -- e.g. Kleenex. The PTO calls these "suggestive" marks.

SECOND BEST: Completely abstract names: Exxon, Aspirin. (Aspirin used be a trademark but they lost it in the US because they did not defend it sufficiently against people using it as a generic! Escalator is another lost trademark.). The PTO calls these "fanciful" names.

THIRD BEST: Real word names that twist meaning to create a uniqueness. E.g. RealAudio -- its audio is not "real," but real evokes an image of fidelity or up-to-date-ness. Another example: "Windows."

FOURTH BEST: Generic or descriptive names. By this, I mean names that are literal and seek to do part of the job of the brochure or ad. E.g. "Acme List Manager." These are very difficult to protect and difficult or impossible to trademark.

A person's name, applied to a product, is dicey. McDonald's required investment in the mark before it could be protected. Rubenzahl's Fine Cookies would be easier to protect. Some countries do not allow surnames to be trademarked. Geographic marks (Vermont ice cream) can be problematic as well, especially internationally.

So you pulled out the white board and came up with some good names. Now what?

Next step is to see if they are available. In general, the web is a good way to find problems. If no search engine finds your proposed name the chances are pretty good it's not being used -- but it's not a guarantee. A name might be used locally. Believe it or not, some companies are not on the web(!). And search engines will overlook similar spellings. For instance, if you want to call your company Aextra and there is a company out there using Axtra in a related product area, you could be in trouble. You cannot respell someone's trademark and use it -- I could not sell Mr. Feld's Cookies, given the existence of Mrs. Field's cookies.

Trademarks are examined by industry classification. I probably could not sell Mr. Feld's potato chips but I could probably open Mr. Feld's Quick Oil Change (because it's a completely different industry class). However, as a mark gathers investment, its scope widens: I could not sell Exxon cookies or Exxon Carpets because Exxon's investment in the mark gives it authority in other industry classes.

For a small business, a web search is probably enough confidence but if you are launching a national ad campaign, you need to go further. A legal search will cost a few hundred dollars. Or you can do this yourself at the Sunnyvale Patent Library using their trademark CD-ROMs. The US patent and trademark (USPTO) database is online at http://www.uspto.gov/.

If all that seems ok, you can have an intellectual property attorney do a detailed legal search.

Once you have satisfied yourself that your mark is solid, you can register the trademark by applying to the PTO. They evaluate and do their own search, publish for public objection, then issue the mark. Usually about 9 months, I think. You do not have to register a mark to use it but it's a good way to establish your claim and a wise move if you invest in the mark by builidng a business or promoting products using the name.

You can do all of this without an attorney. That's fine for a small venture, but if changing your name a few years from now would be a big expense, then it is wise to hire an intellectual property attorney at the outset.

Some good sites:

<http://www.nolo.com> Nolo Press: Look for their trademark info page

<http://www.uspto.gov/web/offices/tac/doc/basic/> PTO's Basic Facts document.

<http://www.uspto.gov/web/offices/tac/doc/basic/formats.html> Page for downloading PTO's excellent trademarks pamphlet. Start with PTO Basic Facts; great overview.