The 2 Most Important Factors In Selecting A Name For Your Business, Products & Services

Are you preparing to launch a new business, product line or program? Before selecting a name for your brand, two important factors should be carefully considered: availability and registrability.


The first question to ask is whether the name you are considering is in fact available for you to use. Is there a mark already in existence that you might be infringing upon? While some businesses conduct no search at all, many (mistakenly) believe that their investigation is complete upon conducting a Google search and/or a search of the USPTO trademark database. These basic searches are useful in immediately eliminating potential conflicts; however, there are many other factors that must be taken into consideration. Because trademark infringement may occur where marks are phonetically similar, a basic search of the exact spelling would not accurately heed all results. Furthermore, it is entirely possible obtain superior "Common Law" rights to a mark without ever having established an Internet presence at all!


After determining availability, the next consideration is strength in registrability. Does the mark have a strong likelihood of registration? There is a spectrum of strength ranging from the weakest (those that are descriptive and generic) to the strongest (fanciful misspellings and coined words). 

A recent example of a United States Patent & Trade Office (USPTO) denial for descriptiveness involves Google's application for the mark "Glass" relating to their Google Glass optical head mounted display product (how Google describes this product without actually using the word glass or glasses). The examining attorney deemed the mark merely descriptive of the product, which is primarily composed of glass. The strongest marks are those that are fancifully misspelled or coined words, such as: Kinkos and Xerox.

This post is a very brief introduction to the concepts of Availability & Registrability. It's important to bear in mind that the trademarking process is tedious and nuanced. If you'd like to learn more, my Trademarks 101 Teleseminar details my own search method, the TM registration process and a more thorough discussion of the topics discussed in this article.


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Copyright vs Trademark: What's The Difference?

Does Intellectual Property make your head spin?

Clients often ask me about the difference between copyrights and trademarks. It's a great question and an important distinction to be made in protecting your business and brand. 

Trademarks identify the source of goods and services. In fact, the stated purpose of trademark law is to prevent a likelihood of confusion among consumers.

When I travel, I love knowing that I can find a Bikram yoga studio in any city/town and expect the same, or very similar, experience to that of my local Bikram studio. Similarly, when I purchase a Nikon accessory for my camera, I feel assured as to the quality and integrity of the product. Consumer confidence! Of course, trademarks also protect businesses from brand dilution.

Trademarks include names of the business/product/service, logos, colors, sounds and even smells. Famous marks include the red sole of Louboutin shoe, McDonald's golden arches and the NBC three-note chime sound. The United States Patent and Trade Office issues trademark protection which may be indefinite, provided the owner of the mark properly renews registration every 10 years.

I like to explain copyright to my clients as the actual substance of the work that they create. This would include books, photographs, paintings, blogs and even choreographed dance. Copyright law protects work that is both published and unpublished. In fact, your original work is copyright protected from the very moment it was created. Copyright registration is, however, necessary to enforce your rights in a federal court. The United States Copyright Office issues copyright protection which lasts for the lifetime of the author plus 70 years. 


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