Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!” Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name. In this post and the others in this series, I’ll walk you through the most important of those factors.
My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name. I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested. The next step is one that I cannot recommend strongly enough:
Step 6: Have Your Trademark Candidates Searched
It is always a good idea to have a trademark search conducted before adopting any mark, to determine whether it is available for your use and registration. Basically, you need to determine whether anyone else is using the same mark or a confusingly similar mark, for the same or related goods or services, and whether anyone else has registered or filed an application to register the mark.
Here is where an attorney experienced in the practice of trademark law can be of great value to you. That attorney can obtain the necessary searches for you, evaluate the search results, and provide you with an analysis of the marks’ availability and registrability.
Search Early, When It’s Easy to Start Over
For obvious reasons, it is best to do this as early as possible, before you spend money on implementing or advertising the mark you’re interested in using. That way, if the search identifies a problem with the mark, you will not have wasted time, money and effort on an unusable mark. Also, your ranked list of candidates will allow your attorney to move efficiently through the list in case your top preferences are unavailable.
Failure to Search Invites Disaster
It’s almost impossible to overstate the importance of having your mark(s) searched. If you don’t consumer test your names, you may end up with a brand name to which consumers don’t react as well as you had hoped. Not good, but something you can work over time to fix.
On the other hand, if you fail to search your mark for availability and registrability, the potential downside is much, much worse. If you blunder into a conflict with someone already using your mark, you could find your product or service almost instantaneously pulled from the market, by order of a federal judge. How’s that for a full-stop on your product launch?
After I posted a link to this article on another forum, a perceptive reader commented that not searching a trademark is like playing Russian roulette. He was right – in fact, it’s like playing the game with a gun that can still blow your brains out a week, a month, six months, even a year after you pull the trigger. You never know when an infringement challenge is going to come out of the woodwork.
When going through the search process, you should bear in mind that with the proliferation of brands, products and services on today’s market a trademark can almost never be assessed as an absolute no-risk green light. Usually an attorney issuing a trademark opinion will structure it as an assessment of the level of risk in proceeding with the name. Taking that risk assessment into account, you the marketer can decide whether you want to accept the risk level and move forward.
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