Blogroll – Page 6 – The Business of Creativity

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:

Brainstorm a bunch of cool, distinctive, and suggestive names.

Make sure the domain name is available.

Check synonyms of the name and other spelling via Google for organizations offering similar services.

Search the United States Patent and Trademark database at www.uspto.gov for possible conflicts.

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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The Google Adword TM Trap

Here’s November’s Scene Magazine Article:

The Google Adword TM Trap

By now almost everyone has conducted an Internet key word search using the Google engine. You’ve noticed those “sponsored links” at the top of the results page. If you’re in business and a savvy marketer, you’ve probably thought, “heck, I should probably buy those spots for all my goods and services.” The next step in that logic is to think, “heck, I should probably buy those spots for all my competitors’ goods and services!” “BRILLIANT,” you exclaim as you tally up the keywords in your AdWord buy. What could go wrong?

I wouldn’t be writing a column on the topic if nothing could go wrong – I guess I’m getting predictable. In just the last three weeks I’ve gotten involved in three cases of at least arguable trademark infringement cases involving Company A purchasing the brand name of Company B’s leading product as a key word in Company A’s Google Adword buy. In two of the cases, I’ve been hired by Company B to smack Company A. In the other case, Company A hired me to help them respond to the smack from Company B.

Tough to follow? How about a hypothetical example?

Say I’m our neighbor down the road, Crocs. Say you’re the new guy on the block trying to get a little of that action. You call your product “Snakes” because they make you feel like you’re gliding right down the sidewalk and yet have a nice bite for traction. You decide to get tricky and buy a sponsored link on the search term “crocs.” Are you in trouble?

Not yet, it’s a bit more complicated. First you need to understand that the federal trademark laws are in place to prevent consumers from being confused as to the source of a good or service and by preventing consumer confusion, protect the investment of brand owners in their company’s reputation, goodwill, and marketing dollars. There’s a concept in trademark law called “initial interest confusion” which is when one company unfairly diverts the potential consumer’s attention away from the brand they were looking for over to the competing product at the moment of initial interest, even if there is no confusion at the point of actual purchase. One of my clients said it more understandably, “I feel like he’s fishing off of my hook!”

Now, back to our example; has Snakes violated trademark law by purchasing the Google Adword for “crocs?” Answer: not yet.

The current, but evolving, opinion in the different Federal District Courts around the country is that the simple purchase of the AdWord is legal. To be more precise, the courts have really been addressing the issue of whether or not the SALE of the trademark term is an infringement. The cases have focused on Google (think VERY deep pockets) for contributing to trademark infringement by even allowing competitors to make AdWord buys using trademark terms.

Logically then, it comes down to the advertisement you create on the response page for the key word search you purchased. Google allows a headline of up to 25 characters, two 35 character description or body copy lines, one display Web address of up to 35 characters that is linked to the destination Web page. So, in our example you could place the following text ad.

Headline: Get your Crocs Here
Body Copy: We’re your best source for Crocs
Display URL: www.crocs-r-us.com

The ad would be linked to your “snakes.com” Web site in such a way that the person searching the keyword “crocs” doesn’t know you’re not the real Crocs until they end up on your site. Does that seam fair? Do you think it would cause “consumer confusion as to the source of the good or service?” I sure do, and I’m betting a judge or jury would too. This seems like a clear-cut example of how using the “crocs” name as your keyword buy on Google AdWords would get you into deep trademark trouble.

On the other hand, if you purchase the keyword “crocs” but set up the response ad in a way that clearly does not confuse consumers, then you are arguably using the “crocs” term fairly, at least under current case law. For example, the following ad would be far less likely to confuse consumers.

Headline: Like Crocs? Try Snakes!
Body Copy: Snakes are the best things since Crocs!
Different company, great shoes.
Display URL: www.snakes.com

As I said before, this is evolving law and as such will probably not be settled for a while. Before using a competitor’s brand name in your Google AdWord purchase, be sure to discuss the details of your specific situation with a trademark lawyer familiar with these issues.