by Tom Makeig, a lawyer who serves entrepreneurs

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Thomas H. Makeig, with offices in Fairfield, Iowa, is a 1981 alumnus of New York University School of Law and is admitted to the practice of law in Iowa and New York. This blog does not offer legal advice, which requires confidential personal communication with a lawyer. NOTICE TO THE PUBLIC: The determination of the need for legal services and the choice of a lawyer are extremely important decisions and should not be based solely upon advertisements or self-proclaimed expertise. This disclosure is required by rule of the Supreme Court of Iowa.

Thursday, August 27, 2009

Choosing a name for your product or company

Naming your product, service or company is an important task that requires not only inspiration from you and your supporters, but also market research, a good branding specialist and a trademark lawyer. This is especially true if you are planning to introduce a product or service regionally, nationally or internationally.

A good name, as well as a logo, tagline and the look and feel of your product (its "trade dress"), identifies your product, distinguishes it from competitors, positions it within the marketplace (premium or discount, leading edge or reliable and proven, etc.), stakes out a mark that is exclusive to you and avoids infringing on someone else's mark.

Before you involve your branding and trademark team, do your own industry research, attend trade shows, spend hours researching your compeitors and customers online, talk to actual and prospective suppliers and customers, and talk at length with your mentors and supporters. If you are inexperienced in branding, get some general guidance from a branding specialist and read up on trademark law using guidance from Nolo Press or another reputable service. Also, do a "new user search" of the US Trademark Office "TESS" database of registered, pending and abandoned US trademarks and check the online databases of the secretary of state for your state. These databases are a good start and will flag some obvious conflicts (marks that are already taken) but THEY ARE NOT DEFINITIVE, as the trademark laws provide that under some circumstances an unregistered mark can have rights superior to the mark that you apply to register. 

Never rely solely on your search of the Trademark Office database: treat the results as preliminary and ask your trademark lawyer to conduct as close to a definitive trademark search as possible on your intended mark before you commit to it. You may learn that the exact mark you want is taken, or that a similar mark presents a possibility of conflict. Your trademark lawyer will also work with you in an effort to tweak your proposed mark to avoid potential conflicts.

When you do commit to a mark, you will want to register the mark with the US Trademark Office as well as in key overseas markets (if these apply). Filing an application appears simple and can be done using a service such as legalzoom, but you should follow your trademark lawyer's advice on this, because trademark examiners are increasingly following the time-honored practice of the Patent Office, which is to routinely reject applications with reasons given, in the expectation that the applicant will come back and negotiate amendments that will meet with the examiner's approval and result in registration of the amended application. This back-and-forth with the trademark examiner is best done by a trademark lawyer on your behalf.

Once you obtain your mark, use it consistently and follow your lawyer's advise on display, monitoring and enforcement of your mark.

Part of using your mark effectively is securing Internet addresses (URL's) that incorporate your mark.  See my post on this topic.

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