When giving a new product a name, you need to think about whether it is available and is not already being used by someone else (unless you like the idea of being named as a defendant in a trademark infringement lawsuit). You also need to select a name that is distinctive enough for you to register and protect, so that competitors won't be able to take a free ride on the goodwill you have built up by coming out with a product that has a confusingly similar name.
It is essential to consult with an experienced trademark attorney when naming a new product. But how can do you do that without breaking the bank?
First, pick several possible names, not just one, before you call the attorney. The biggest mistake people make is coming up with only one name, and becoming stubbornly wedded to it. Clients who come up with several possible names are less likely to be emotionally invested in any one name and thus can make a wiser decision if the lawyer feels one of the names has a conflict.
Once you have a list of names, none of which you emotionally "must have," narrow them down to the top choices, then research them yourself, online, as best you can, before calling the attorney. First, go to www.uspto.gov and search to see whether there are any registered trademarks or pending applications for the name in a similar class of goods. This takes only seconds. However, by itself, it is not a truly complete search, since the USPTO's Web site only gives you registrations and applications, and only gives them to you for the exact same mark; the Web site does not search for similar marks, nor does it give you any information regarding unregistered users who may exist in the marketplace, using the same or a similar mark.
Unregistered, pre-existing users can pose a big problem because legally a name is protected simply based on commercial use: It does not have to be registered. That means an unregistered prior user, a "common law user," may have priority over you and, down the road, could sue you for infringement even if you end up being the first party to apply for and obtain a trademark registration for the name.
That brings us to the second step that you can and should take, before calling the lawyer: Type in the mark you want as a search term on a search engine such as Google, and read through the hits. Is anyone else using the name? If so, for what products? If the products you discover online are in the same class or a related class of goods as yours, that is a red flag to discuss with counsel.
The third thing you should do before talking to counsel is check if anyone has registered the name as a domain name, at www.networksolutions.com. (As a business matter, you will want to do this anyway, because the ideal situation is for you to own the .com of any name you want to use as a trademark.)
After doing all that, call in an experienced trademark attorney. Discuss your findings with him or her, discuss your list of potential names, and then, when you and the attorney have settled upon the leading candidate, have the attorney order a comprehensive search report on that name. Such reports, which cost around $350, scour publicly available records for the existence of unregistered "common law" users.
The attorney will review the results of the search report and then advise you on what he or she believes to be your recommended course of action. Sometimes, if there is a "hit" in the report, the recommended course of action may be to contact that business to ascertain the extent to which they are using the name (and, if they are using it, to offer to buy them out of it). Other times, the best course of action may simply be to select a different name.
The attorney then should immediately apply for federal registration. This can be done on an intent-to-use basis, before you have sold or advertised even one unit of your product. If you have done things right, you will sleep well at night knowing that you have picked a name that not only looks and sounds good, but that you know to be available, not already in use by anyone else, relatively free of legal risk and ultimately registrable at the U.S. Patent and Trademark Office with you as its owner.
Sater is a partner in the law firm of Rutter Hobbs & Davidoff (www.rutterhobbs.com) specializing in trademark, copyright, advertising and business law. A graduate of Harvard Law School and Stanford University, he represents companies both large and small that advertise and distribute products at retail, on the Internet and on TV.