Here are 3 Important Legal Considerations to Evaluate Before Deciding on a Business or Product Name
Written by Jaxon C Munns
This article aims to help anyone who is getting ready to start a new business, brand, product, or anything similar, in deciding upon a name for their handiwork. Time and time again I see high energy and visionary entrepreneurs create incredible products or services, but fail to take the time to consider the legal implications of settling on a name for their creation. By failing to consider this, they set themselves up to receive a cease and desist letter from the owner of a similar product or service who already has trademark rights in the exact name of their choosing.
Very few feelings can compare to that of having an idea, working tirelessly to make it come to life, and getting ready to release it to the marketplace. Many of my friends, clients, and even family members have gone through this exhilarating, yet completely taxing process. Dozens and dozens of hours spent pouring into this new venture, having a vision for what it could become. Yet, naturally, the process of choosing a name for this product, service, or business typically is done without considering whether or not using this name would open them up to potential legal issues down the road. This article will give you some major considerations to think about the next time you find yourself in this position.
Consideration #1: Is This Exact Trademark Being Used Right Now?
After having a brainstorming session on a name for your business, product, or service you should take the top 5 or so contenders of potential names and do a basic search to see if anyone else is currently using it right now. This basic search should be done in two primary ways.
1) Run a Google/Bing Search to See if Anyone is Using this Exact Name.
Though this may seem intuitive, it is one of the most overlooked steps when deciding on a name. Running this simple search will reveal quickly if anyone is using your desired name, and perhaps more importantly, if the name is being used in the exact type of industry you are in. There is a reason the name Delta can legally be used for both airlines and sink faucets. If you see an exact match of your desired name, its not the end of the world.
2) Use a Free Basic Knockout Search To See if This Name Has Been Registered
Once you’ve cleared the internet search, see if your desired name has been registered the United States Patent and Trademark Office. To do this, you can click here and use this software to see if your desired trademark has been registered in the United States, or the European Union. Pay attention to the international class numbers on the right, because they’ll tell you what industry that trademark is being used in.
Consideration #2: Will This Trademark Be Too Similar to Another Trademark already in Use?
Even if there isn’t an exact match for your desired trademark, there may be other trademarks that are similar enough that you could still open yourself up to legal issues. The legal standard that is applied in deciding whether a trademark is too similar to another is if it is “confusingly similar.” In other words, would an ordinary consumer have a hard time deciding if this product is yours or another company based on the trademark?
For example, if you wanted to use the name “J-Money” as the name for your newly developed cologne, you could open yourself up to legal issues if someone was already selling cologne under the trademark “Jay-Munny”. To avoid conflicts such as this, you’ll need to have a comprehensive search done on your desired mark.
A comprehensive search uses artificial intelligence to consider every possible conflict that may exist if you were to use your desired mark. Simply put, this is where it gets difficult and complicated. With all the other things you have to deal with as a business owner, entrepreneur, inventor, etc., taking the time to consider and understand all the legal ramifications and nuances of using a certain trademark is overwhelming. Hiring an experienced Trademark Attorney can not only help you receive federal registration of your trademark, but perhaps more importantly they can help protect you from using a trademark that could open you up to law suits.
Consideration #3: Will My Product/Service Just Be Local? Or Do I Think It Will Sell In Other States and Internationally?
The scope of where you plan to sell or offer your product/service is absolutely critical when deciding on a name. Not only does it effect the scope of the search that needs to be run to make sure your desired trademark isn’t being used, but it also brings in additional considerations such as translation of your mark in different languages, which countries you need to be aware of when searching, If you’re planning to just open up a local hair salon, you obviously don’t need to be concerned about if your desired salon name is being used in Switzerland. However, if you’re planning to sell some sort of widget on Amazon, eBay, or even through your own e-commerce site you need to be certain you aren’t infringing on the trademark of someone else globally.
Some of these considerations are ones that you can and should do on your own. Some of these others are more complex, and time consuming. Indeed, if you desire to register your trademark with the United States Patent and Trademark Office, filing your application literally begins a legal proceeding in a federal system.
Here at MZJ, we are available to assist you in your Trademark matter no matter where you are on the spectrum. We can help you decide on a name for your product or company, we can help you register your trademark, we can enforce your trademark rights if you believe someone is infringing on your trademark, we can provide watch services for your trademark where we actively police the global market place making sure no one is illegally benefitting from your hard work, and so much more. Contact us today with your trademark matter, or reach out to me directly at Jaxon@Murrayziel.com for questions.