Do you need to name your product? Following the basics of trademark law can guide you through the process.

By Greg Sater

To be successful, ideally, a product should have a good name: a name that customers can relate to, remember and recommend to others.

However, not only must you give your product a good name, you also need to think about whether that name is available to be used in the first place, and is not already being used by someone else. A third consideration is to try to select a name that is distinctive enough for you to register and protect as your own. That way, the knock-off artists won’t be able to ride your coattails by coming out with a name that is confusingly similar.

For these reasons, it is essential to consult with an experienced trademark attorney when you are naming any new product, and to do it as early as possible so that, if it turns out there is a problem, you can change course with a minimum of disruption.

For this, it is helpful to have a basic understanding of the types of names that are protectable. Trademark law recognizes four kinds of names: (1) generic, (2) descriptive, (3) suggestive and (4) arbitrary or fanciful.

WHAT’S IN A NAME?
Most people understand that the first kind of name, a generic name, can never be protected. That is why if you name a vacuum cleaner “Vacuum Cleaner” or you name a ladder “Ladder,” you will be sorely disappointed when, no matter how successful you’ve been in the marketplace, you find that you can’t prevent a competitor from using the same or a similar name. Judges use a test called “who-are-you/what-are-you?” in deciding if something is generic. A generic name tells the consumer what the product is, rather than identifying who it comes from. For example, in the court case Rudolph Intern. v. Realys, Inc., 482 F.3d 1195 (9th Cir. 2007), the marketer lost the trademark infringement case because its product’s name, “Disinfectable,” was found to be generic.

The second kind of name, a descriptive name, also generally does not enjoy trademark protection because it describes some aspect of the product or what the product can do. Descriptive names will not be protected and cannot be registered absent proof of “secondary meaning,” i.e., proof that, as a result of significant sales or advertising, consumers have come to associate the name with one source, rather than believing that the product that bears that name might come from two or more unrelated sources. This can be hard to prove. Most often, it is proven through surveys or by circumstantial evidence, e.g., significant advertising and/or sales.

What you want to do, ideally, is get yourself elevated to the next level, which is to a name that a judge would find to be suggestive. That way, you do not need to prove secondary meaning in order to receive protection. For a suggestive name, there needs to be a mental leap, or some exercise of imagination on the part of the consumer, in order for him or her to reach a conclusion, based on the name, as to the nature or characteristics of the product. Descriptive marks require no mental leap: they describe the product’s features or what it can do. Suggestive marks on the other hand, require a leap. Think “Ivory” for soap.

MAKING A DISTINCTION
The gold standard, which is one step higher than suggestive, is a mark that is arbitrary or fanciful, like a coined word such as “Kleenex” or a word that tells you nothing about the nature of the goods you are buying, like “Apple” for a computer.

While many marketers like to pick descriptive names, or names that contain words within them, that are descriptive, because such names immediately telegraph something about the product to the consumer, the harsh legal reality of the situation is that such names make it very hard, and sometimes impossible, to prevent competitors from using similar names. This is because, by and large, judges and juries tend to give little weight to a component of a mark that is descriptive or otherwise in common use. This is why you often see products such as “Urine Off” competing against “Urine Gone,” “Pasta Pronto” competing against “Pasta Express,” “Ionic Pro” competing against “Ionic Breeze,” and so forth. One recent case involved “Bowflex,” which unsuccessfully tried to stop another marketer from selling “Bodyflex,” the term “flex” being indistinct.

More important, as noted, descriptive names can’t be registered without proof of their having developed secondary meaning; that means a descriptive name can’t be registered before it has been used and, indeed, used extensively. A non-descriptive name can be registered prior to any use. That is a huge advantage because, then, by the time you unveil your product to the public and, thus, unveil it to the knock-off artists, you can sleep soundly at night knowing that the name you picked already will receive federal protection. This is accomplished by filing an intent-to-use application with the United States Patent and Trademark Office.

THE BASICS
So how can you go about doing this intelligently and without spending a fortune in legal fees?

The first thing is to pick several possible product names, not just one, before contacting the attorney. Usually, the biggest mistake people make is coming up with only one name, and becoming stubbornly wedded to it before they even have called their lawyer. Clients who, in contrast, have come up with numerous names are less likely to be emotionally tied to one name, and can make a wiser decision.

You should consider who the target customer is, what makes your product unique or different, how the target customer would describe your product in their words, and what names are being used by the competition. For some products, you also should consider whether the product will be marketed in a foreign language, since some names do not translate well (the classic example of a branding blunder being the Chevy “Nova” automobile because, in Spanish, the words no va mean “no go”).

Once you have a list of potential names, none of which you emotionally “must have,” you narrow them down to the top choices and then research them yourself, online, as best you can, before calling your attorney. You can do this research in three easy steps.

First, go to www.uspto.gov and search to see whether there are any registered trademarks or pending applications for that same name in a similar class of goods. This is easy to do, it is free, and it takes only seconds. However, the website at www.uspto.gov will only give you registrations or applications for an identical mark; it will not search for similar marks or give you any information regarding unregistered users who may be active in the marketplace.

The latter is a significant problem because a name can be protected as a trademark simply based on its commercial use: it does not have to be registered, in order to enjoy trademark rights. An unregistered user is called a “common law” user. If there is a common law user in the marketplace, and it has made bona fide commercial use of the same mark or a confusingly similar mark to the one that you wish to adopt, unfortunately for you the common law user will have rights that surpass your rights. This is true even if you apply for and receive a federal trademark registration for the name. A prior common law user will enjoy priority rights over a later registration. This is why it is very important to search as best you can for the existence of such common law users, before adopting your mark.

The second step you can and should take on your own, before calling a lawyer, is to type in the mark that you want as a search term in Internet search engines such as Google and Yahoo, and read through the hits to see whether and how others might be using the name. If you see another company using the same or confusingly similar name, and doing so with a product that is in the same or a related class of goods, that should be a red flag to discuss with your legal counsel.

The third thing you should do is look to see if anyone has registered the name as a domain name. Go to www.networksolutions.com and do a “who is” search. This is another way to turn up a common law user. (In any event, you will want to do this because, for any name you want to use as a trademark, the ideal situation is for you to buy the .com domain name, if not also the .net.)

After doing all of the above, then it is time to call in an experienced trademark attorney. Review your findings with the trademark attorney, discuss your list of names and then order a comprehensive search report on your favorite name or names. These reports, which cost around $350, scour public records including newspapers and magazines for the existence of common law users.

The attorney then analyzes the results of the search reports and advises you on what he or she views as your recommended course of action. Sometimes, if there is a “hit” in the search report, the recommended course of action may be to contact that business to ascertain to what extent they are using the name and, if they are using it, then offer to buy them out of the name, so that there is no conflict. At other times, the recommended course of action may simply be to select another name.

The attorney then immediately should apply for federal registration of the name. As noted, this can and should be done on an intent-to-use basis before you have sold or even advertised one unit.

If you apply and your mark becomes registered, your application date becomes your priority date nationwide. That means nobody in the same class of goods can achieve priority rights over you from that date forward. Once your mark is registered, you can use the ® symbol. Until then, you can only use the â„¢ symbol. That is recommended, however, so that you can put everyone on notice that you consider the name to belong to you.

If you have done everything right, you will have settled upon a name that consumers can relate to, that is not already in use by another user who would be able to claim superior rights to yours and could shut you down with an injunction, and that is non-generic, non-descriptive and distinctive enough to be registered by the United States Patent and Trademark Office, so that you can have an easier time preventing competitors from coming into the market with similar names.

Lastly, take a look at the IMS and Jordan Whitney rankings, which list the top products that are now on the market. Ask yourself, which of those product names satisfy the objectives discussed above.

Greg Sater is an attorney with Rutter Hobbs & Davidoff Inc., a law firm based in Los Angeles. He can be reached at (310) 286-1700, or via e-mail at [email protected].