In working with trademark attorneys for over 20 years, we believe that most are very conservative when it comes to new product naming and interpreting trademark law. While this may keep you out of trademark infringement lawsuits, it also sometimes eliminates potentially viable, strong names because they have some degree of TM registration risk. We have seen cases where companies avoid using a “risky” brand name nixed by TM counsel only to have a competitor then come along later, register that name or a similar name, and gain competitive advantage and market share as a result.
We do believe TM counselors should ALWAYS BE INCLUDED in the name selection process. But, they are not infallible, they are conservative by training, and questioning the thinking behind their recommendation is prudent and sometimes reveals a gem of a name with only minor wordsmithing. That is, when we advocate for a name with a client’s TM attorney, we try to understand what, specifically, TM counsel is concerned about. We might ask questions like:
- Is it the total brand name that creates the problem or just a particular syllable? Can we salvage the essence of the name by tweaking the spelling?
- Does adding a graphic element to the name itself and filing for the word mark and design element together help?
- Will narrowing the Goods & Services description reduce the potential risk?
- If we include an existing trademark as part of the registration might this facilitate the process?
- What other ways can we reduce the likelihood of confusion?
There are often several viable strategies to consider before dismissing a brand name that has “some but perhaps acceptable risk” when evaluating a trademark.
Three of the many good trademark attorneys we have worked with over the years are:
- Herb Hammond, Thompson & Knight
- Scott Johnston, Merchant & Gould
- Darin Klemchuck, Klemchuck Kubasta LLP
Note that we are not trademark attorneys, don’t provide legal advice, and strongly encourage you not to skimp when it comes to trademark counsel. While good attorneys are often expensive, we have also found they tend to be most helpful in accurately assessing TM registration risk and in providing the guidance you may need to salvage that great brand name idea.