How to Choose the Right Name…..the first time
Naming your company and products is often the most creative and enjoyable phase of a new venture. Over the years, we have recognized the following pitfalls in the naming process:
(1) Choosing a descriptive or generic name. Often clients tell us, “I want my company name to tell the public something about what I do.” Therefore, they choose a name like “Chemical Free Dry Cleaning” for a – um – chemical free dry cleaning company. They urgently want to file a trademark application to make sure that no one else can adopt this name. The hard fact: descriptive and generic names are not protectable. If you choose a descriptive or generic name, you will find it very difficult to distinguish your company in the market place.
(2) Choosing someone else’s name. Even more often, we run into companies adopting mere variations of company or product names adopted previously by others. Sometimes, without actually knowing they have tread on protected land until it is too late . . . . and they have received a nasty cease and desist letter from the original owner. A prudent entrepreneur will search the proposed product and company names on both the internet and the Trademark data base. If the name is in use on any product or service closely related to your products or services, you should stay away. If you feel like you are in a gray zone and are not sure, you should seek the opinion of a trademark attorney. Your business attorney, divorce attorney, or friend in law school is often not the best person to ask.
(3) Failing to protect the mark with a Trademark registration. If your company is seeking funding, announcing its name to the public, and investing thousands to millions of dollars in advertising and branding, you should pursue Trademark protection. Often, clients wait until they have funding or until after they have started business before they file trademark applications. Often, they find someone else has already applied to register the same mark. This leads to either costly rebranding or costly trademark battles to reclaim the name. Entrepreneurs should know of the existence of the “Intent to Use” trademark application which will allow them to protect the name while they are taking care of the preliminary details of launching the business. The Intent to Use application allows the business to reserve the name for at least one to two years (if procedures are followed) while they prepare to launch.
(4) Even if your business is small scale – such as a craft shop on Etsy or Ebay, you must be careful not to adopt the marks of others. It doesn’t matter how small you are. Take your branding seriously. The only way your clients will find you is to adopt distinct product and company names.
Heather N. Schafer