Freeman Advertising

Considerations for creating a new business name

This is a follow up to my previous blog post called Trademark Infringement – are you protected?

The previous article described how a business can be at risk due to trademark infringement. In this article I will discuss defensive methods for choosing a business name to avoid possible infringement issues.

A hypothetical example of trademark infringement

Before these considerations are made it is important to understand that no matter how much research you do, how many lawyers you hire to research for you and no matter how confident you are the law is set up to protect the first person who brings the name to market. Period.  An extreme example of this would be that you have hired a team of trademark lawyers to help secure your trademark. They do the customary research, hunting to find anyone else or business who uses the name in consideration in this country or any other. After extensive searching with traditional and high tech means they find nothing. They advise you the name is OK to claim and you apply for a trademark. You pay your lawyers bill and begin producing your product or service feeling confident that you are the only person who can use your name that you have so carefully claimed with the best of intentions.

A few years go by and your business is growing leaps and bounds, you are now supplying your brand internationally. Everything looks good, as you drive down the highway you see your name plastered on billboards and “claim a part of this highway” signs. And then one day out of the blue you see your product name in a grocery store with a different logo and slightly different product. Immediately you pick up the product, for convenience lets say cheese, and you are stupefied. You buy the block of cheese take it back to your headquarters and ask your subordinates if they know anything about this. Everyone is as mystified as you. You call the purchaser at the grocery store and they explain they have been selling the cheese for about a year. You secured a trademark two years ago and call your lawyer. Your lawyer sends the rival company a cease and desist letter. They reply saying they began selling their product with “their” name 5 years ago at a farmer’s market and hence are entitled to the name.

You do some research and find out it is true. They did such a small volume of sales from their basement mostly and without any advertising, without a website or business phone that it would have been impossible to know. This supermarket chain has recently began selling their product which is right in your market and you have little recourse. The law is created to protect the first person to bring the name to market.

Strategies

The first strategy when creating a business name is to avoid any names that you have ever heard of being used for any business anywhere. Stay way clear. For example, if your name is Jim McDonald and you are starting a rib restaurant and are considering using your own last name, don’t. Although you are granted protection to use your last name in most states even though other business use the same name you would likely be irritating the fast food giant. They would do whatever they could to protect their name and brand. They have deep pockets and although you may win you will most likely endure monetary and emotional consequences.

The second strategy is to avoid common words. Common words are exactly what they imply. They are the most used words in our language. They are used so frequently they they become rudimentary. They are also used by many others to name their businesses. They have two reasons to be avoided. Overuse and not unique. On the other had it is not impossible to be successful using common words. An example is Best Buy.

Strategy three would be to pick a unique name. A unique name is a very powerful tool. A unique name is also a great way to identify your business. The more common a name is the more convoluted your business will become against the competition. When you think about it the businesses with the best names are mostly unique and unusual. Starbucks would fall into this category, what does Starbucks mean, had you heard the term used before they were a coffee giant?

A unique name is invaluable when naming a business

A unique name is also invaluable if someone else decides to use it. Let’s say I am creating a new business and I will be selling shoes. I ponder some names…‘Shoe Outlet’…‘Shoe Mart’…‘Shoes 4 All’…hmm, nothing sounds unique. But then I reach a bit further. ‘Walk this way’…nope a hit by Aerosmith comes to mind, better stay away from that. How about ‘Walking on Clouds?’ Not too bad but I will keep trying…‘Sole-ificant’ Ah, now we have a unique name. Although I would keep searching for something far better, still, this is an example of a name that would have unlikely been used before, is indicative of the product line and is a play on the word significant. But the ultimate beauty is it’s uniqueness. If I find out that I have legitimate claim to it and take measures to protect it and then find someone else begins to use it taking advantage of my success it would be hard to establish for them that they had used a name as such prior to my being the first to bring it to market.

Secondly it would be difficult to establish that a unique name is weak. A weak trademark means that other businesses use the same trademarked name in the same industry or similar industry. For example if an ice cream company has trademarked “Ultimate Ice Cream” and there are other ice cream manufacturers using the same name or very similar names (for example, “Ultimate Ice Cream Cakes”) and or products. This would indicate to the court that the name was not aptly protected by the trademark holder and would use this lack of defense in its judgment.

There are ways to make even stronger trademarks. Using acronyms or creating a name from parts of words are most typical.  Some examples would be Exxon-Mobil, Wal-Mart, Sunoco, Nextel, Motorola and FedEx just to name a few. These names are know only for the businesses represent and cannot be confused with other words or trademarks. They are excellent examples of names created for a very specific and singular use.

You have many possibilities when creating your business name. Keep in mind the more unique the more unlikely it will be challenged as well as being easier to defend.

Please visit our website…www.freemanadvertising.com

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Are you using a business name that is owned by someone else?

USPTO is a terrific resource

Who is entitled to a name?

According to trademark law the first person to bring the name to market is the owner. For this reason it is very important to carefully document exactly when you introduced your name to the world and keep careful records of your first sale(s).

With the world becoming ever smaller due to the internet, finding a unique name is more and more difficult. But lets assume you already have been doing business with an existing name for about 5 years and you are looking to expand into other markets. In your best efforts you do a google search and discover there is another business in an abutting state doing the same type of business with the same name you have been using. (Most likely you are aware of this before the google search.)

Don’t panic. trademark law is vast and very complex. You may not be infringing at all. You can begin by going to the US Trademark website and conducting a search and see who has registered your business name if you haven’t already registered it. If you find your competition in the abutting state has registered it let us say 10 years ago you certainly are not entitled to conduct business using their registered name. If you haven’t received a cease and desist letter you may at any time. The more you grow your business infringing upon a protected name the more liability you incur.

When a trademark becomes weak

Also, as a trademark holder they must protect their name or through the eyes of the courts it will become a weak mark. As their mark becomes weaker you may be able to build a case against them if you have other arguments that the mark is weak. For example, if there are other businesses that also use the name. The more businesses using the name the more dilute the mark becomes. Furthermore, a thorough review of the trademark application (available online) may reveal other weaknesses. Trying to declare a weak mark works best for defensive use.

Alternately If you registered your name about five years ago and discover through other means the company in the other state didn’t register their name but brought the name to market before you did they are entitled to it. And other than successful intimidation or a sappy please there is no way to prevent them from continuing to use it.

In this situation it is typically mutually beneficial for both businesses to go on as usual. However when one business is anticipating expansion and will directly compete with a business with the same name something will have to give.

When things become costly

At this point you must weigh the costs. The first option would be to change your business name. When you start adding up the cost of a logo, signs, printed materials, trade show booths, etc, etc and your lost name recognition which you have been building over the years you will quickly realize this will be expensive. In addition to the cost can you be sure that you will select a new name that will be unique and not already in use?

The second option is to approach the company in the abutting state and suggest that they change their name. If they haven’t already pursued you they are not asserting their rights which may be reflective of their other business practices as well.

So far we have been assuming you have been infringing. But what if you do a search and discover that you are entitled to the name? Immediately send them a cease and desist letter. Often this will do the trick as they will realize further action will involve the expense of court and ultimate defeat. Court is the least desirable option for all parties because one party will loose and it could be you. It is important to consider what would happen if you loose your name and are required to stop using it immediately. The impact would be enormous.

Use court as a last resort

Hopefully your letter will enlighten them and they will stop using the name. If they don’t it may be beneficial from a financial standpoint to make a cash offer. Evaluate how costly it would be to go to court and in the worst case loose. And this does happen, judges have been know to make crazy rulings. Start with an offer that is reasonable to you understanding that the next step is to bring the matter before a judge.

When bringing a new name to trade it is very important to research as comprehensively as possible it’s uniqueness. Always avoid common names and consider creating an acronym or other combination of letters that do now appear in the dictionary. It is far easier to prove infringement with a distinct name.

Link to United States Patent and Trademark Office…http://www.uspto.gov/

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This morning was absolutely perfect Maine. I was up at the crack of light and off to do a photo shoot that required a bit of extra attention. The photos are for a contractor whose website I created and maintain. This home has been featured on his website but has only, this spring, realized its full magnificence. I tried photographing it earlier in the week but by 8am the sun was so strong most of the highlights got washed out. This morning however things were different.

This spacious home seems to sprawl across the landscape

This 3 car garage features a second story apartment

Southerly Exposure looking toward the Atlantic Ocean

This breakfast room offers a lovely place to enjoy your oatmeal

A remarkable morning in Maine

These photos are now uploaded to the photo gallery on the Website of Period Design Restoration. You can view them at http://www.perioddesignandrestoration.com/hillside_cottage.html

www.dayscrabmeatandlobster.com

There is a crabmeat and lobster shack located in Yarmouth, Maine and known to the locals for 70+ years as Days.

The owner of the Days Crabmeat and Lobster was surfing the web one day and came across the Ogunquit Lobster Pound’s website, she saw Freeman Advertising had created it (that’s us), and hired us to create a site of the same “flavor” for Days.  She sent us photos and her menu and we worked to make another happy client.

This site is static. A budget site. It includes Google Analytics and a bit of SEO. The site is intended to draw potential customers as they browse the web for great places to eat in Maine. It is heavily saturated with the word lobster as this is their biggest draw. Secondly, they have sold crabmeat for their entire 70 years but recently the labor to pick the crabs is hard to find. Although they wanted to have crabmeat a large part of the site they also wanted to insure customers they sold lots of Maine lobster.

As the season progress the owner intends to send us photos to ad current interest. We also started a facebook page for Days. This is a good example of a new site which provides a web presence and has plenty of room to evolve.

Newly designed website for The Ogunquit Lobster Pound

We were approached by Bill Hancock, owner of The Ogunquit Lobster Pound to create a website that reflected the restaurant and its history. This website is comprised of 5 pages. A home/introduction page, a history page, directions, leave a comment and a page for their menu. It is a very simple site designed to be cost effect, clear and informative.

The text was written to attract internet users on vacation in Ogunquit to find the site using keywords such as lobster, clams, dinner and then finding the menu. As the season progresses additional photos will be added to further entice the palette. As with any site, SEO (search engine optimization) will be ongoing.

The Ogunquit Lobster Pound has recently created a facebook page to begin Social Media marketing as well. I am sure they would love to have you as a fan, click here.

And, when you are in Ogunquit we recommend The Ogunquit Lobster Pound. The Lobsters are cooked in water from the Ogunquit River and the shells are cracked before being served. The steamed clams are also cooked in the seawater and most delicious. They have also recently added fried foods to their menu. Click here for menu.

This blog can be found at http://freemanadvertising.com/blog/?p=119