Accuchex Blog

Brand Selection: Choosing a Distinctive and Protectable Name

Posted by Mark A. Steiner on Mar 26, 2018 4:52:36 PM

[This blog is a guest blog written by Mark Steiner to help educate the Accuchex readers on the importance of branding.]

brand-selection.jpgApple, Google, Popsicle, ExxonMobil, Starbucks… What do they all have in common? You guessed it. They’re all brand names that are immensely valuable identifiers of the source of the goods and services for which they are used.

The point is, a brand name, business name, tagline, slogan, or logo are all trademarks that are extremely important to a business, perhaps its most valuable assets. As it’s generally accepted that a “brand name” product is superior to a generic one, the value of a brand can be even greater than the value of the product or business. In fact, sometimes a brand is so important that it is the business.

But what if the two were suddenly forced to go their separate ways?

This is the flip side of a brand or business success story, when a thriving business or product gets just big enough to be noticed, and receives a cease and desist letter from a trademark attorney representing another brand owner, informing them that their name isn’t actually theirs. In that case, if a business has previously used the same or similar name – even if it’s not registered as a trademark -- and thinks the use of a junior user’s trademark is likely to cause confusion, they can claim that the only acceptable remedy is to force a name change, and in a worst case scenario, even file a lawsuit. That’s not something most businesses can easily survive.

So how do you select a brand with confidence?

My recommendation to any new business owner or anyone getting ready to launch a new product or

From an offensive view,
it should be distinctive
and protectable,
so that another
business offering
related goods or
services won’t cause confusion with yours

You should be looking for a name that’s not only available, but from a defensive standpoint, doesn’t open your business to the risk of conflict with another business. From an offensive view, it should be distinctive and protectable, so that another business offering related goods or services won’t cause confusion with yours.  That’s the first step in the route to brand protection and the development of a valuable brand.service is to start off by doing some preliminary research to look for a name that’s available (i.e. not already trademarked) before printing those business cards, ordering signage, or launching that fancy new marketing campaign.

A basic internet search is a good place to start -- just typing in the name, tag line, or other words connected to the business can offer a good sense of what’s out there, to see if there’s anything that would cause you to eliminate any of your choices. But you shouldn’t stop there.

Brands, goodwill, and the importance of a registered trademark.

A business owner who values the good will they’ll build through the service or products they’ve developed will want to protect it by hiring a trademark attorney to conduct a professional and comprehensive brand (or trademark) availability search. 

Business owners know that a company earns the good will of its customers by doing the right things, and practicing right methods. This good will is generally earned over time, and is often associated with a brand. To protect you from having to sacrifice your company’s hard-earned good will, a trademark attorney can provide the best advice as to whether the name (brand) you’ve chosen is distinctive and protectable through a comprehensive search, including, but not limited to:

  • All registered trademarks in the US Patent and Trademark Office as well as pending trademark applications;
  • State trademark registrations
  • Unregistered uses of brand names in trade directories, the Web, domain names, and other databases or publications

After gathering as much of the factual data as possible, we analyze the data from a legal standpoint to assess whether the trademark can be used and registered without significant risk of conflict from claims from other parties. Once these initial steps have been covered, you will have some peace of mind and want to consider registration of your trademark (see my future blogs).

But isn’t a trademark attorney expensive?

To that I’d ask, do you get preventative check-ups with your doctor or do you wait until you’re sick?

Yes, there’s a cost to hiring a trademark attorney, and I’m well aware of the fact that most people cringe at the thought of proactively paying those fees. But believe me when I say, starting all over again and reprinting those business cards, letterhead, and brochures, buying new signage or packaging, completely changing a business name, or defending yourself in court is far more expensive than the investment you make hiring a specialized attorney.  It’s not just the hard costs of making a change but also that loss of goodwill. It’s an investment in the future of your business, and the benefits far outweigh the cost.

If you’re considering a new business or product name and need professional advice, contact me at I’d be happy to help.

Mark A. Steiner
 practices in the area of intellectual property law, with a focus on trademark and copyright law and offers clients a strong combination of trial experience, counseling, enforcement, procurement and licensing expertise in matters concerning trademarks, trade identity, Internet domain names, copyrights, trade secrets and unfair competition.

Mark has represented companies in a wide variety of industries, including e-commerce, computer hardware and software, networking, retail, architectural and engineering-design services, personal-care products, sporting goods, clothing, toys and games, food and beverage, and hotels and restaurants. He serves as intellectual property counsel to companies at various stages of development, from inception to maturity. Mr. Steiner regularly assists clients in the management and enforcement of domestic and international trademark portfolios.

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