Choosing a company or product name can be difficult and time-consuming for a start-up. That said, if the branding process is done correctly, it can save the company substantial time and money in the long-run.
Most importantly, new branding campaigns should be researched extensively to determine whether similar marks are being used in commerce by third parties. It is important to search filings made with the United States Patent and Trademark Office (USPTO) for trademark registrations. Searches of unregistered uses (also known as common law uses) of similar marks in commerce must also be conducted through online searches and other means.
Many companies use trademarks without having registered the marks, so it is important to look for such unregistered uses prior to committing to a new branding campaign. It is a good idea to order and review commercial search reports, which will provide critical information related to potentially conflicting brands based on a number of proprietary databases, including the USPTO filings and unregistered, common law uses.
As the market place becomes more and more crowded, branding campaigns are subject to significant risk if an inadequate search is performed. Responding to cease and desist letters is expensive and time-consuming, and being forced to rebrand is embarrassing, and even more costly. Imagine the time and expense associated with taking down a website and rebranding your entire product line.
The other key element in selecting a new branding campaign is to choose a brand name that is not descriptive of the products or services offered under the brand. Brands that are descriptive are difficult to register with the USPTO and even more difficult to enforce in the market place, even with a trademark registration. For example, it would be difficult to enforce the trademark “American Journal of Bicycles” because this is descriptive of the journal. Arbitrary and fanciful names (e.g. Twitter) are more enforceable than descriptive ones (e.g. Facebook). It is difficult to convince infringing third parties to rebrand if the brand is descriptive. This is especially important in the mobile application space, as stores like iTunes are filled with applications that are branded with descriptive marks.
A branding process conducted before the launch of a company or product that includes extensive research, and results in unique rather than descriptive names, can result in distinctive brands with enforceable trademarks.
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For more information on LeClairRyan's Intellectual Property practice, including patents, trade secrets, trademarks, copyrights, and rights in software, please contact Rebecca Conner.
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LeClairRyan is a law firm with deep entrepreneurial roots, having originally been founded as a venture capital boutique. With more than 350 attorneys and offices from Virginia to New York to California, the firm provides business counsel and client representation in matters of corporate law and high-stakes litigation. Its mission is to achieve excellence for its clients by providing integrated, responsive and timely services.