When to Screen Your Name
Trademark screening stands as a crucial checkpoint in the process of naming brands, products, or services. Nothing is more disheartening than to get your heart set on a name that’s legally unavailable. So this begs the question, When is the best time to screen your top names for trademark risks?
The Importance of Timing in Trademark Screening for Naming
A trademark can be a unique phrase, word, or symbol that represents the source of particular goods and services. That is, a trademark is often your brand name and if you use it properly, it will protect your brand. Securing a dot-com or web domain does not mean that your brand name is secured, and on the flip side, just because someone else has parked your desired domain doesn’t mean that it’s not able to be trademarked. However, before we get too far, there’s one essential consideration: timing. When should you initiate trademark screening in the naming process? Let’s delve into this critical aspect.
Early Planning and Strategy
Before diving into trademark screening, it’s advisable to engage in brainstorming sessions. You’ve likely already started a list of name ideas, but if not, get those creative juices flowing and generate a list of 10 to 15 diverse names that align with your brand’s identity and purpose. This initial ideation phase allows creative exploration without the immediate pressure of legal scrutiny.
The Timing Conundrum
Timing plays a pivotal role. Jumping into trademark screening too early might limit your creativity and enthusiasm for potential names. Conversely, waiting until the final stages might result in disappointment and setbacks if chosen names face legal hurdles.
Strategies for Effective Timing
Consider this process akin to peeling layers of an onion. At an early stage, conduct a preliminary search using the USPTO database. However, realize its limitations—it might miss similar-sounding names or common law usage. As you narrow down your name options, intensify the screening process, encompassing state registrations, global considerations, and competitive analysis within your industry.
Certain industries, such as fashion, cosmetics, and accessories, pose higher hurdles in trademarking due to fierce competition and existing trademarks. In these sectors, coined or made-up names might offer a safer legal route, albeit requiring more significant branding efforts.
Balancing Legal Safety and Market Appeal
Finding a balance between a legally secure name and one that resonates in the market is crucial. Short, common English words often pose challenges in trademarking, while coined names offer more legal safety but demand additional branding investments.
Expert Advice and Early Screening
Consulting trademark experts early in the process remains pivotal. While not legal professionals themselves, industry experts like NameStormers can guide you through the initial trademark screening. This early step helps manage expectations and navigate potential legal roadblocks effectively. However, before you pick your final name, we strongly recommend you do contact a trademark attorney to review all of the legal research you’ve already done. They will also likely want to do some additional searching and help you prepare and file your trademark application.
The Bottom Line
Understanding the significance of timing in trademark screening is vital. Initiating this process after creative brainstorming but before finalizing a name strikes a balance between creativity and legal compliance. Ultimately, early trademark screening mitigates potential risks, ensuring a smoother path towards securing a name that’s both legally sound and resonates in the market.
Ashley Elliott (00:04):
Hi guys. Welcome back to our naming Ninja new podcast, naming it an AI Age. We are excited to have you today. So what we’re going to do today is really have a conversation around trademark screening. Why to do it. We all know because we need to, when to do it is more of the question when in the naming process we recommend doing it. Some strategies that we’ve found over the years, and by we, I mean Mike and possibly Megan, because I’m still a newbie, but I think having a conversation around it could be fruitful. So let’s get started. Mike, what are your thoughts on this and what have you learned over the years?
Mike Carr (00:42):
Don’t do trademark screening. It is the worst part of it. It’s just going to, if you think you’re having a bad day, when you start doing trademark screening, your day’s only going to get worse. So my recommendation is never, ever do it if you want to have a good day, period, no exceptions. That’s it.
Ashley Elliott (00:59):
So then how do we know we have a safe name?
Mike Carr (01:04):
I just think you don’t need to worry about whether you have a safe name, just go forward with whatever name you like the most. If it fits your branding and your marketing, cross the finish line with it. I mean, Megan, is that not right?
Megan Dzialo (01:18):
Mike, you and I both know that is 100% incorrect. Lemme teach you my ways, Mike, that I have learned from you. Mike. He is correct in that it is not any fun. So if you are looking to ruin your day, absolutely, go ahead and start doing trademark screening. You’ll be very discouraged, which is why there are these amazing people called trademark screenings that somehow love what they do and they do a really good job at it. We’ve got some awesome ones on our team, which is not me. I love the more creative work. But so to answer your question, Ashley, yes, you have to care about trademark screening. And when we say trademark screening, we mean looking to see if your name is legally viable, looking to see what the level of risk is associated with the names that you are interested in. So when we’re talking about when do you do trademark screening, my first thought on that is first just brainstorm.
Don’t think of a name, and then immediately go check on the web to go see what you can find. That is important, but give yourself some space to first brainstorm some ideas. Get yourself down to, I would even say 10 or 15 ideas that are different. All very different ideas, more descriptive, more evocative. And once you have a set of names of 10 to 15 names that you’re like, okay, I feel like there’s something in here. That’s when I say you should start embarking on the trademark screening, whether you want to do it yourself or hire it out, which we definitely think you should hire it out and get an expert, but you definitely want to do it before you file that application to federally register your, you don’t want to go in there and try to register without doing any trademark.
Ashley Elliott (03:03):
Yeah, I think the creative process, I agree, is if I were to sit and think of one name and then go try to screen it and just see the basic U-S-B-T-O search, I would be discouraged. And there’s so many names out there that are already being used and maybe not even in the space that I would want to use it in, but there are so many. It is just a discouraging process. So I feel like going with a handful that you kind of agreed with, that you have that you like, and then taking it. I also think maybe on the front end, seeing what other people are doing in your space. I know that that’s more of a competitive analysis type thing, but what kind of name could make you different that’s not common in this space. And then take that ideation and kind of think of a bunch of different names and then taking that, but it’s going to be a cycle. It’s not just, okay, here we go. Here’s the five names. Boom. Because most of the time they’re probably not going to be available and you’re going to have to go back to the drawing board. But I think somewhere before the end, obviously, and not in the very beginning. So Mike, what are your thoughts on this?
Mike Carr (04:02):
Well, I think the process you described of maybe starting with some creative, but then taking a look at what competitors are doing and what’s already out there, like peeling layers of an onion. And so you don’t want to leave the onion totally unpeeled until you get to the end because man, your eyes are really going to get water. So if you peel that initial layer pretty early in the process and sort of get an idea, okay, some of these names that we thought were really pretty cool look like they’re real close to some things that are already out there. And you can’t just go to the uspto.gov and that’s the website, uspto.gov website and do a search there. You can, and that’s a great first step, but often, unless you’re pretty skilled, you’ll miss sound alikes and trademark laws based upon how a name sounds, not how it’s spelled necessarily. So just because the name is spelled differently doesn’t really prevent a problem. And
Ashley Elliott (05:01):
Then you need, I feel like we’ve talked about, is the tip of the iceberg. And so what’s underneath the ocean? Mike, tell us all these tell us and why.
Mike Carr (05:09):
Well, there’s so many other things to look at, right? So we had a call this morning with a client and a global client. They’re going to be in many countries. And so you have to look at not just a single government registration, but every country in the us you have to look at state trademark registrations, which the US PTO doesn’t have on their database. So you have to access the state registrations, but you can register a trademark at the state level and not just the federal level. And so that would be an issue. And then of course, the common law usage checks, which often you just do by doing web searches. If you find someone that’s using a name in your space, even though they’ve never registered the name as a trademark, they have legal rights in that name. It’s called Common Law Usage. They have certain common law usage rights in that name.
So our strong position is do not wait till the end. And most of our competitors and almost everybody in this business, seems to stick this trademark screen at the very end of the process because everybody knows it’s just a black hole of despair and oh my gosh, we thought we had this name and everyone’s excited about it, and now we can’t use it. And we want you to avoid that. And so the way to avoid that is as soon as you have a few ideas, start looking at some things, start becoming educated as to well, these roots, these styles of names are probably taken in our space. And that’s another way that Trademark law works is you can have the same exact name registered as a trademark in most cases, as long as they’re for different goods and services. So you can have the Odyssey minivan and you can have the Odyssey video game, and you can have the Odyssey line of blue jeans and they can all coexist.
They can all be registered trademarks because the likelihood of confusion is pretty minimal. You’re not going to confuse the line of jeans with a van that you’re driving your kids to school in, but you need to start looking at that stuff. And that’s why an expert is so important. We do our own trademark screenings. We probably do as thorough a job as many law firms do, because we want our clients to know before they then take it to their legal for the final full search that it’s been fully vetted or pretty well vetted and that we’ve identified most of the potential issues. So if you wait, do so at your own risk. So I stand corrected. I know I started this podcast by saying, blow it off. Don’t do it. No worries. Ignorance is bliss when it comes to trademark law. Ignorance is going to always bite you in the rear. It just will, I promise you. And so I have a question. Please, please, please
Ashley Elliott (07:57):
Go ahead. So you mentioned it could be in the same space, the same name in a different space. What about, I just think that some industries we’ve found over the years, you’ve found specifically some industries are way harder to get a trademark than others. Are there any that you say, if you’re trying to get a trademark in this space, you’d really need to do the front end work of looking it up?
Mike Carr (08:27):
Megan, what do you think on that question? Do you have any thoughts on that one? What spaces are the most difficult based upon all the naming work you’ve done?
Megan Dzialo (08:36):
Yeah, fashion is one, fashion, accessories, jewelry, it’s unending. That’s one makeup. I would include makeup in cosmetics in that too. That industry is so incredibly difficult that you really have to just go with a made up coined name that has no meaning to it and build a brand story around it because pretty much every name that has a real word embedded in it, or even a mashup word, it’s off the table.
Ashley Elliott (09:06):
I think that’s why we talked last week about having a following and then being able to maybe create a brand around that, that lift could be done on the front end. But yeah, I agree.
Mike Carr (09:16):
And the style of name is hugely important here. So if you think you really want a short English word as your brand, that is a really tough order in any category, especially in fashion and jewelry and accessories and cosmetics and several others that Megan referred to. So you need to go in assuming that the most obvious words are gone, the suggestive words are probably problematic. A few of ’em might be available if you’re willing to go with something that’s coined and made up, that’s often safer from a legal standpoint. But of course it takes more time and money than to build the story around. So it’s this inevitable trade-off lower risk from a trademark standpoint typically means more of an investment from a marketing standpoint. And that’s just the nature of the beast, and that’s why people like us exist is we’re trying to get you right where you want to be in terms of right in the middle.
You want a name that can hit the ground running from a marketing standpoint without a whole lot of investment in time, but it’s not so Me Too or so similar to other names out there that you’re going to run in all kinds of legal issues before you ever get out into market. Or worst case, you’re out into market and you get the cease and desist letter a year or two after you’ve been out there, and you have to stop and start all over again. And that we get a lot of business from folks that have gone down that path, right? Is that they punted on the trademark. They started using their name. They were small, so nobody bugged them. But then they’re big with the web and everything they’re selling online around the country. And sure enough, a few years later, someone else says, you got to stop using this name. We have the federal trademark and we were using it before you were, and they’ve got to stop using it. And it’s a painful, expensive time to make that kind of mistake. Far better to do this trademark screening early on, sort of manage your expectations and to hopefully change the style of name you’re after if you’re having trouble getting your preferred style through. At least that’s my thinking. I don’t know what you guys think.
Ashley Elliott (11:26):
Yeah, I think people who have been in this space in terms of doing trademark screening, I mean, if you are interested in talking to us about it and our guru, Mike, the Mike Carr on trademark screening and all the questions that you have, we’d be happy to answer. We are, again, not trademark attorneys, so obviously at the end of the day, you would have that for your final walkthrough and legal betting of everything. But we do work in the space and we do talk about it a lot. So if you’re interested in it, please join us listening on our podcast. We’ll have some more regarding trademark screening and maybe when and how and all the things. So thanks for joining us this week. We’ll continue next week as we talk more about naming.
Mike Carr (12:10):
Hey guys. Bye-Bye bye.