Scene Magazine – January 2007

Here’s the January 2007 Scene Magazine column.
What’s in a Name?
© Kevin E. Houchin, Esq.

Naming is one of the most important pieces of launching a new business, band, or product – yet most people really don’t know how to weigh the different factors involved in the decision. Making the wrong choice can cost you dearly. I just had a client who had to change her business name, after spending a considerable amount of money and time building her brand, because her business name infringed on the trademark rights of a similar company of the same name in California.

How do you avoid that type of circumstance and still come up with a great name for your venture? Follow this process:

  1. Brainstorm a bunch of cool, distinctive, and suggestive names.
  2. Make sure the domain name is available.
  3. Check synonyms of the name and other spelling via Google for organizations offering similar services.
  4. Search the United States Patent and Trademark database at www.uspto.gov for possible conflicts.
  5. Register your intent to use the name in commerce with the USPTO.

Brainstorming names is the most challenging and fun part of the process.

The challenge comes from trying to come up with a unique name that still suggests something about your product or service. Trademark rights are more powerful as you become more abstract, so if you’re completely making up a new word, be prepared to spend a lot of time and money answering the question “what he heck is that?” New drugs are the perfect example, would any of us know what “Lunesta,” “Viagra,” “Pepsid,” or “Zantac” were without hundreds of thousands of dollars spent in advertising and public relations? Spending that kind of money connecting your name to your product isn’t an option for most new ventures, so I recommend that people think up names that are more than interesting than something that is merely descriptive of their product or service, but less arbitrary or abstract than a completely new word. The perfect balance is something like “Crocs” for shoes that have some bite, or “Wooden Pencil” for a creative services firm. Whatever you do, don’t just slap together a bunch of those magnetic refrigerator magnet letters and words.

Once you have a list of possibilities, start hitting the Internet. Before the Web, it was easier to name a product or service – especially products and services with limited availability. Now you are national or international as soon as you post a Web site, and you can’t get away without having a Web site, so your domain name has to be perfect. Search for domain names that match your exact business name. Odds are, someone’s using it. Move down your list until you find something that’s available. If you exhaust the list, then start checking what kinds of products and services are being offered by the owners of the matching domains. If someone is using your target domain for the same services, then your out of luck – move to the next name. If someone is using your target domain for a completely different type of service or product, then you MIGHT be able to make something work. The trick at that point is to work out some variation of the domain that would not confuse consumers regarding the source of your products and the other company’s products. Because consumer confusion is what drives trademark law, check sound-alike domains too. Your goal is to own the appropriate name in your category of goods and services.

Domain names are the toughest to figure out, and 99 times out of 100, if you can find an open domain name you’ll be clear relative to trademarks. But, just to be safe, you should search the USPTO database to make sure there is nobody out there with a registered use of the name that hasn’t figured out they need a Web site. Yes, it’s rare, but you can still find someone who hasn’t figured out the power of the internet.

Finally, once you’ve grabbed the perfect domain name for your product or service, register your intent to use that name with the USPTO so that other people who come along are officially on notice that you intend to connect that brand with your products. It takes a lot of work to build a brand, don’t let it go to waste by leaving it unprotected.
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Kevin E. Houchin is a copyright, trademark, arts & entertainment, and business development attorney located in Fort Collins, Colorado working with creative people and businesses all across the United States. To contact Kevin Houchin, call 970-214-6808 or email him at kevin.houchin@houchinlaw.com.






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