How to Choose and Protect a Business or Product Name

Posted over 5 years ago. 3 helpful votes

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1

Decide what type of name registration is appropriate for your new business.

There are three types of name "registration": D/B/A's, filing a corporation/LLC, and trademark registration. Only trademark registration *protects* a name from use by others. Registering a d/b/a is done at the county or city. Incorporating/filing an LLC is at the state level. Both of these only check to rule out an identical name. Neither addresses trademark liability. Trademark rights trump both of these. There may be another business which can sue -- a nasty (and preventable) surprise.

2

Choose the right business name for your new business.

Choose the best name possible. Advertising and stationery are expensive. To also be a trademark, a business or product name must NOT be descriptive. "WESTERN RUSTIC DINNERWARE" is unprotectable for hand-made ceramic plates. A strong word not describing the activity or product is protectable. "BODEGA" means "countryside inn," suggests an authentic setting for rustic plates and cups, and is more protectable.

3

Prepare to screen your business name to make sure others are not using it.

Failing to search is the first mistake. The new owner picks a name, puts up a website, and orders stationery without finding out whether the name is already in use. Conflicts will only turn up after the business owner has invested and started doing business. It's not necessary to avoid any other uses - only those in the same or a related line of business. Inexpensive searches are the second mistake. They typically search half of what they should and provide no analysis. The new business owner does not know what problems might happen. A skimpy trademark search is like a dental X-ray that only shows 75% of your teeth, to save money. You can't be sure that you don't have any cavities.

4

Now choose another five potential names for your business.

In my twenty years of experience as an attorney for new businesses and clients with new trademarks, 3 out of 4 names will not be available. Have your backup choices available and ready to go.

5

Make an appointment with an experienced trademark attorney.

A new business owner should consult with a business attorney experienced in trademarks, not just a business attorney. Many attorneys gloss over the trademark issue. They just want to sell you a low-cost incorporation or LLC. It's easy to be lulled into thinking that everything is OK. The client needs to ask up front about business names, trademarks, and potential liability.

6

Request a trademark opinion letter for national or Internet-based products or businesses.

If a business owner will be selling products or services outside of a small geographic area, it is absolutely critical to get a name screening search, an analysis of the potential for successful trademark registration, AND an opinion on potential infringement. A trademark opinion letter is a crucial preventive step in launching a national or Internet-based business. Thousands of company and product names are adopted every year. It is highly unlikely that a chosen name will be completely clear. Most business names and product names are identical or similar to names for unrelated products and services. This will not present a legal conflict. However, merely *similar* names in the same area can present a huge conflict. It takes an experienced trademark attorney to sort this out.

Additional Resources

Business Names / DBA's

Basic Trademark Facts

Using Trademarks In Print And Other Materials

Choosing Domain Names

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