by Bill Honaker, “The IP Guy,” partner at Dickinson-Wright

 January 17, 2025

The seven steps for selecting and safeguarding a brand.

I read an interesting article in the Wall Street Journal, “The Toughest Challenge in Sports,” by Katie Deighton. The challenge was naming the team. The article pointed out that “those in charge of the naming process are finding that satisfying the whims of fans and in-house lawyers is anything but quick and easy… sports teams need names that are one word, easily chantable, that look good on T-shirts, that can be turned into mascots…”

Even the big teams have problems. The Cleveland Guardians baseball team whiffed when picking their new name. They somehow missed that the Cleveland Guardian Roller Derby team had superior rights. You can read about this branding mistake in my article Swing and a Miss – Cleveland Guardians in Jeopardy.

Your business has similar challenges.

The challenge of picking a great brand name isn’t limited to sports teams. Every business must be careful when choosing their brand names. Your business name needs to appeal to customers, not violate others’ rights, and be capable of protection. It’s even better if they’re one word like those desired by sports teams.

Here are four steps to help you choose your next brand name: 

1. Make a list of your top choices. You can do this by brainstorming, using thesaurus searches, hiring a brand company, etc.
2. Prioritize your list from best to worst. You want a strong trademark. The strongest are made-up words. The weakest are descriptive or geographic words. I go into more detail in my article How to Choose the Best Trademark.
   
3. Start with the best and search the Internet to determine if others are using the name or something similar on related products or services. You’re looking for others who are using a similar mark for similar goods and services. The main question is whether consumers will be confused. Will consumers believe that you are somehow associated with the existing trademark? I go into more detail below.
4. Check the United States Trademark Office (uspto.gov) register of trademarks. Ask the same question about any marks you find: Will consumers be confused? If you want help doing this, call me, and I’ll show you how. It will take about 10 minutes.
5. If you need the domain name, check Register.com to see if it’s available. Search in incognito mode. If you don’t, you may find that the price has increased when you come back and attempt to buy it.
6. Once you have a good name, have trademark counsel do a full search to locate any hidden issues. They have access to sophisticated searching techniques and know from experience what issues arise.
7. Register your new name with the US Trademark Office and in the Trademark Office of any country in which you are planning to use the name.
   

Searching the Internet and Trademark Office to clear your mark.

You must make sure your brand name is available. You don’t want to adopt a name and later get a letter inviting you to a lawsuit for trademark infringement.

Trademark infringement is the unauthorized use of a trademark or service mark on, or in connection with, goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

Trademark infringement requires proof that consumers are likely to be confused. The likelihood of confusion is evaluated using a seven-factor test:

1. the strength of the trademark allegedly infringed,
2. the similarity of the parties’ marks,
3. the similarity of the parties’ goods or services,
4. the similarity of the parties’ sales channels, distribution, and customers,
5. the similarity of advertising media,
6. defendant’s intent and
7. actual confusion.
   

These are complex legal questions. Basically, the question is whether consumers would confuse your name with someone else’s name. A shortcut to these questions is to ask yourself, “If I owned the name already being used, would it upset me if someone else used it?” For example, you might be upset if it’s the same name and for generally related goods. Your concern in this instance would be that consumers would think that they are purchasing from you when, in fact, they’re purchasing from the other.

Why you should register your name.

A trademark is eligible for federal registration if the mark is used in interstate commerce, generally defined as commerce between the states. Therefore, a mark used in multiple states is eligible for federal registration.

Federal trademark registration is obtained by filing an application with the United States Trademark Office. The United States Trademark Office examines the application. If it meets all the requirements, it is registered. The registration is good for an initial five years and then an additional ten-year period upon filing renewals.

There are numerous advantages to federal registration:

• Your trademark is presumed valid, giving you an important advantage in court.
• It’s considered valid throughout the United States. Instead of being limited to the geographic area under common law, use is conferred throughout the United States.
• Your mark can become incontestable after five years. This shields the mark against challenges to validity.
• Federal registration allows the use of ® to identify the mark as registered. The ® is recognized by most as a symbol of your ownership.
• Your registration protects itself. The mark is easy to find when others are considering choosing a mark. It’s publicly shown on the USPTO website. A quick search will lead sophisticated businesses to your mark, and they will likely pick a different one. Few businesses want to pick a trademark that will get them into litigation.

The Takeaway

Your brand name can be your most valuable asset. Picking a name can be challenging but doing it correctly can result in an asset that grows in value over time and is easy to protect. 

A great brand is an important asset in your intellectual property portfolio. I’ve created a Guide and Checklist to help you identify your intellectual property. Click the button below to download a free copy. 

 

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the new book, Invisible Assets – How to Maximize the Hidden Value in Your Business.