FAQs

When you discover a potential trademark conflict with your existing business name, consulting an IP attorney is often a smart first step. Several factors determine whether a genuine issue exists.

If you’ve received a cease and desist letter, legal advice becomes essential. Some companies aggressively defend their trademarks regardless of industry boundaries. Consider the case of TJ Maxx, which sued Circuit City over the CarMax name claiming trademark infringement around the root “Max.” Although CarMax ultimately prevailed, the litigation proved to be a costly distraction.

If you haven’t registered your trademark, the situation becomes more complex. Your attorney can help navigate these waters. You may have some common law rights, but you’ll need to establish when you began using your mark (locally, in interstate commerce, or internationally).

Another scenario involves a competitor launching a product with a name confusingly similar to yours in your industry or a related field. “Likelihood of confusion” is the critical factor in determining trademark conflicts. You’ll need to decide whether defending your mark is worth the potential legal battle.

Should you determine that rebranding is your best option, prepare for a significant  undertaking. Beyond selecting and registering a new name, you’ll need to revise branding materials, update legal documents and contracts, refresh your digital presence, and modify internal systems and documentation.

When you decide you need a naming system, you may be trying organize a mess of already existing brand names. Historically, names may have been created individually or acquired via M&A and therefore have no connection to one another. Maybe they are wildly different styles of names, say Medussa and Your Way. You may find that there is no common theme, root, letter or any type of connection between names.

Building a naming system is about creating that connection between names when it makes sense. Time to roll up your sleeves, take inventory and decide what’s in and what’s out. Some legacy products may need to keep their names because they have so much equity. Some products may be due for a makeover anyway. And domain names and trademark registrations should be a factor in all this.

Looking at the names you have and new products in development may give you some ideas. Perhaps there is a theme that can be expanded or a style of name that prevails? Or maybe starting from scratch is the best approach. Investigating many approaches is advisable. Keep several paths open until a possible set of new names is developed for each. Then evaluate the different approaches using the names ideas created. Each approach will have its advantages and its flaws.

A theme approach can be more evocative and interesting but may require additional marketing and be too limiting depending upon the number of names needed. Check out our NatureSweet & Cherubs case studies using a theme based naming system.

A combination of descriptive roots solves the marketing problems but may be too uninspired and/or similar to competitors’ names. Striking the right balance between descriptiveness and uniqueness is key.

Maybe a single word name that is always preceded by your masterbrand is the best way forward? Or a leading letter that ties everything together? Perhaps coined (made up) names are the best option. There are many ways to go.

Whatever your approach, convincing product teams and leadership on the best way forward can be challenging. If everyone agrees that the goal is a cohesive naming system, then you may need a leadership champion.  We can help you navigate the challenges.

You are in the middle of a product launch for Mango Tango and just learned that it has trademark conflicts in Nepal, your main market. Time to rethink that name. Oh, and you have no time to waste.

Contact us and we can help you navigate this.

Congratulations! You and your team have just selected the “best” name for your new product. Oh, wait … your team is a bunch of old bro’s and your product is cosmetics for young women. Can your team really choose the best name for your target market?

Putting yourself in the mind of your customers/clients and selecting the name they would respond well to is practically impossible. This is why name testing can be important.

As an objective third party, even we cannot choose the right name for you. But we can help you decide whether name testing should be your next step.

If you can get this done, you may need to expand your reach and run for political office!

Do you really need to make everyone happy about that new name? The democratic process of getting consensus has some interesting side effects with naming. Yes, you may get unanimous agreement but likely will end up with a trite name like Simple Solution or Easy Answers. Nothing really wrong with those (except they are yawners) but they may be only the choices everyone can agree upon because they are the least controversial.

People are naturally biased toward the familiar, a tendency known as the mere exposure effect, which Daniel Kahneman explores in his book  “Thinking, Fast and Slow.” With groupthink you are likely to choose a name similar to ones already out there. If you’re not careful, your new name will sound like all your competitors’ names.

Think more about championing a name. Provide a possible tag line, maybe graphic treatment and some copy or explanation with the name. Once your team sees the potential of the name, they may jump on board the name train. People naturally resist the unfamiliar. Even if they don’t all agree, maybe it’s okay to move forward with a name that has a few strong champions.

There are other ways to handle this dilemma. We can identify options to help you tackle this.

There are a number of steps to take to figure out if you can use a name. If you can afford to hire an IP attorney, this is the easiest, most comprehensive approach. Otherwise:

What geographic locations will your company or product or service cover?

• Start with the USPTO’s TESS Database: The United States Patent and Trademark Office’s Trademark Electronic Search System (TESS) is a free database that contains all federally registered trademarks and pending applications. Learn to use various search strategies such as word mark searches and design code searches if your mark includes a logo. Note that this database does not contain state trademark registrations, but it is a good first step in your legal research and see below for more on state searches.
• Internet Search: Conduct a broad search using internet search engines including AI-powered search tools. Look for businesses using the same or a similar name, even if they haven’t registered their trademarks. If the conflict you find is only sold in Malaysia and you will not be selling there, you do not need to worry about it. But if you find a confusingly similar name already in use for the same thing you are selling in the same geography, it may be time to call in a trademark attorney.
• If you will be selling products or services in only select countries, each country has its own trademark registry that you need to check. Some, however, are in the language of that country making this more difficult.
• If you will be selling services in many other countries, WIPO has a free global brand name database for searching
• Since trademarks can also be registered at the state level, check the trademark databases of any states where you plan to do business. These are often found on the Secretary of State’s websites. In some areas (Los Angeles) you will register your name with the county.
• Depending on your product or service, there may be industry-specific databases to consider. For example, pharmaceuticals have their own naming databases, like the FDA National Drug Code Directory.

Consider Domain and Social Media Availability:

• Check for the availability of domain names that match your trademark. This is important even if you do not plan to create a website immediately.
• Search for your proposed trademark on social media platforms to see if the name is already in use or has significant presence.

Common Law Search:

• Check local and national business directories, including online platforms like Yelp, Yellow Pages, and industry-specific directories.
• Search for any mention of your potential name in news articles, blogs, or publications that might not be captured by other databases. We recently found a name a client was considering was a near match for the name a of terrorist organization!

Professional Comprehensive Search:

• For a more thorough search, consider hiring a trademark attorney or a professional search firm. They can perform a comprehensive search that includes all the above and more. They have access to specialized databases and can interpret complex search results.

Evaluate the Results:

• Determine not just identical matches, but nearly identical names that could be confused with yours. Consider similar sounding names, spellings, and industry relevance.
• It’s advisable to get a legal opinion from a trademark attorney based on the search results. They can give you a risk assessment.

To figure this out, you’ll need to do a little reconnaissance. Find a few people who are willing to give you honest feedback. Ask them: “I’m trying to choose the best name for [my company/product]. Can I get your quick take?”  Don’t forget to explain what your company or product actually does.

If you skip the context, people will make it up. True story: we once tested eight made-up names with consumers but failed to tell them what the names were for. We asked a few demographic questions first, like “Are you a parent?” and “How old are your kids?” Then we jumped straight to the names. Guess what? They assumed we were testing baby names. The scores were dismal, and rightfully so. They were awful children’s names!

Maybe use the name in a sentence as they might hear or use it. Will they tell a friend? Will they ask for it at a counter? Will they call and someone will answer “[company name], may I help you?” Will they type it to order online?

Once people understand the context, ask them what they think of each of your favorite name ideas. Have them choose a favorite quickly. This tends to be the one that sparked the strongest first impression. Then, wait a day. Follow up and ask which names they remember and why. Sometimes a name sticks for the wrong reasons, and that’s just as important to know.

Of course, if you want statistically valid memorability results, you’ll need a more structured research approach. We’ve conducted both aided and unaided memorability studies and would be happy to talk through what that process looks like. Just reach out.

The simplest option is to informally test a few key employees and customers yourself. Just keep in mind that a small, handpicked sample can easily lead to biased results.

A more rigorous approach involves structured surveys. You’ll likely need separate surveys for employees and customers, since the context and lead-in questions should differ. For even more meaningful feedback, consider including potential customers in your research as well.

Ultimately, the right research method depends on what the name needs to accomplish. Will it be your prominent brand or a sub-brand? Will it be heavily supported by marketing, or must it stand on its own? In some cases, we may recommend a less conventional approach. See why.