The Name Game: Why Your Business Needs a Trademark Search
We tend to have a deep connection with the name our parents have given us, even if those names are objectively terrible (sorry, Trip McFall). We also tend to hold our business names in high regard. Many owners fall in love with their brand name, fighting to hold onto it even when its use in commerce becomes potentially problematic. After all, many of us think of our business as another child, and we develop a sentimental, and sometimes irrational, attachment to its name. Even Destiny’s Child insisted, “Say My Name.” And who are we to object?
One of the first things most business owners do when starting a business is to choose a name that captures the spirit and uniqueness of their product or service. Other times, the name might be an asset the buyer of a business is purchasing as part of a merger or acquisition (M&A).
Yet even though a name is going to be the main reference point for a company moving forward, many businesses don’t conduct a thorough (or any) business name search to confirm that their preferred name is clear to use in the marketplace before they invest heavily in its promotion, branding, and development.
It’s vital that your new business’s name both serves you well commercially and doesn’t introduce pesky trademark-related problems down the road.
Why do we need to clear a name?
There are two primary reasons to clear a name: (1) to avoid infringement upon a third party’s preexisting use of the name (i.e., liability avoidance) and (2) to protect the name against anyone who might want to use it in the future (i.e., brand protection).
And unless you’re thinking of naming your new start-up Microsoft, Kroger, or Google, you probably won’t know whether your name is available in the marketplace without conducting a survey of what’s out there, taking into consideration not just the name itself, but the industry in which you’ll be using the name, the goods or services you’re offering under the name, and even the geographic region in which you expect to conduct business.
Remember, it’s always more cost effective to clear a name from the outset than to deal with a cease-and-desist letter, an infringement lawsuit, and/or rebranding in the future.
How do I confirm my business Name is Safe to Use?
Unfortunately, there’s no way to know with absolute certainty that your brand name isn’t already in use by someone else, but that doesn’t mean you can’t get a better picture of where you stand.
At a minimum, start with a “knock-out” search on the United States Patent and Trademark Office’s (UPSTO) basic search function and the first several pages of Google to find obvious issues with your name. Your search should include alternative spellings, spacings, and homophones (“know” and “no”), and names that are similar in sound, appearance, and meaning to capture as many conflicting names as possible. Name searches and analyses are fraught with nuance and traps for the unwary, so we always recommend consulting with an attorney to conduct the search, talk through red flags, and evaluate the likelihood of confusion between two marks.
While you can and should consider searching the USPTO database and the first several pages of Google to find competitors with the same or similar name, that might not reveal people and companies who don’t have a registered trademark or active web presence but are still actively using the name. A search of the USPTO database only reveals federally registered trademarks, so state registrations and unregistered marks will fall through the cracks. And if someone started using your name (or a confusingly similar name) before you did, then it’s possible they have preferential, common-law rights to use that name moving forward.
When certainty is paramount, third-party trademark search companies also have comprehensive search options with varying degrees of thoroughness. Even the deepest Google search is no substitute for a comprehensive search report provided by a law firm or report provider.
And while no method is perfect, the best way to increase the likelihood that your brand name is available and that trademark liability is minimized is, again, to choose a name that’s less likely to be taken already. It’s likely there’s another Speedy Dry Cleaning out there—maybe even in your hometown—while Zyzlplatt Dry Cleaning remains somehow unclaimed and ready to use (dibs!)(disclaimer: no legal claim is being made as to the availability of the name Zyzlplatt).
Keep in mind that choosing a unique name does not mean you don’t still need to conduct a search.
Investigate before you invest.
It’s generally more cost effective to take prophylactic steps than respond to a crisis later. A thoroughly conducted trademark name search can help you pinpoint trouble spots early and save you significant reputational, economic, and even emotional harm (brand attachment happens to the best of us) down the road. The attorneys at Full Circle Business Law can help you strategize about your brand name, assess potential trademark risks, and help you confidently protect your brand name.
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