Disclaimer: This is NOT legal advice. It is based on our own experiences.
Over the first few years of developing a new business, you will spend thousands—or even tens of thousands—of dollars developing a brand, buying signage, printing marketing and packaging.
Before you get started down that path please make sure that your most valuable asset—your BRAND— is truly YOURS!!!
You’ve come up with the perfect name for your business or product . . .
But can you use it?
Here is the criteria we use to determine if a potential brand name will fly.
A Google search.
What comes up?
Are there other businesses with similar names that you’ll have to compete with in a search?
If they’ve been around for a long time, are powerful brands, or if they invest heavility in Search Engine Optimization (SEO) they will come up ahead of you in a search.
Is your preferred name in use by others in your industry?
If so, we recommend going back to the drawing board.
Do you land on an offensive or distasteful website?
We once did a search for a proposed brand that sounded like a perfect name for a line of children’s apparel. The obvious .com website was about “how to get revenge on others”.
See if a good URL (aka: domain name) is available.
In our case, SaraNelson.com was available for a large sum of money. However, SaraNelsonDesign.com was available for a few dollars. In a situation like this, you must decide if the investment makes sense to your business.
If you’re struggling to get the name you want because it’s in use a company in another industry, adding a verb may provide you with a memorable—and available—URL. Consider words like “Call”, “Drink”, “Trust” or “Buy”.
We recommend registering the .com.
People reflexively type .com at the end of a URL, even when instructed otherwise.
While you’re there, consider registering obvious misspellings and the plural version too.
In our case, we would attempt to get:
SaraNelson.com (shortest logical URL)
SaraNelsonDesign.com (name of the business)
SarahNelsonDesign.com (alternative spelling of Sara)
Do a search on USPTO.gov
This is website for the United States Patent and Trademark Office.
Find the TESS search option. Type in the name you are considering. A list of identical and similar names will appear. Click through each to see if they’re operating in your business category.
Let’s say you’re hoping to call your winery “Sara Nelson”
You found one entry for a design firm by that name and one for a software firm. Since they’re both in entirely different business categories, you should be able to proceed.
If it’s in use for a brewery or a distillery it’s not clear whether the category is as narrow as “wine” or as broad as “alcoholic beverages”. You’ll want to seek expert advice from an attorney specializing in Intellectual Property.
If it’s in use by another winery, you will need to go back to the drawing board and find a new name.
OR . . .
You could contact the trademark holder to discuss the possibility of licensing (paying for) the right to use that name.
NOTE: Just because an entry is listed as “DEAD” does not necessarily mean that it’s available.
If you’ve made it through these hoops, chances are good (but not guaranteed) that you will be able to get a trademark.
Apply for the Trademark
This is not a speedy process. It is one you can do yourself, but I recommend hiring an attorney who specializes in Intellectual Property to guide you through the process.
What can happen if you don’t protect your trade name?
We once had a client who didn’t protect their brand or, didn’t know they needed to. After about 5 years in business, another company came along with a similar name.
This new company either understood the importance of trademarking or received good advice—and they applied for the trademark.
Our client was notified of the application, but they chose not to contest it.
The new company was granted the trademark.
But here’s the deal. Once a company has a trademark they are obligated to protect it.
So the next thing you know, our client received a “Cease and Desist” letter informing them that they must stop using the trade name they’d built their business on!
They could have fought during the notification period, but decided it would be less expensive to rebrand than to fight.
It did cost less, but the loss of their identity ultimately cost them their business.
So, my friends, before investing your life’s savings in your new business venture, AND before you spend thousands of dollars developing your brand and buying signage, printing and packaging, PLEASE make sure that your most important asset—your BRAND— is YOURS!