Mentor Column

 

The Name Game

 

By Chris Anderson

 

You've conceived a can't-miss product or service, developed a killer business plan, and are ready to launch your venture. One of your first tasks, along with determining the type of entity you will form, is the selection of a name for your business, as well as any different names that will identify your product or service. How important those choices are and what you should do to protect the chosen names may depend on the branding and goodwill that will be developed around each name. Some basic issues to consider when selecting a name for your business, or any other names that will be used in conducting your business or identifying your product or service, are outlined below:

1. The filing of your business entity formation document doesn't give much in terms of name protection or rights. It will prevent someone from establishing another entity in the same jurisdiction with an identical or similar name (with the standard varying a bit by state). But it won't protect against, or make you aware of, uses of similar names by others. Securing a state filing won't even assure you the name you have selected may be freely used to conduct your business in the selected jurisdiction or elsewhere. Filing a state tradename or trademark registration will not substantially expand your rights or protect your name outside the state.

2. Be creative. The more distinctive or fanciful the name you select, the more likely it isn't already in common use, and that you will be able to protect against other users. Names that are just descriptive are difficult to prevent others from using.

3. Get the domain name. Given the importance of an Internet site to virtually every business, make sure you can secure the domain name or Internet address you want before settling on a name.

4. Find out who else is already using the name. A number of commercial services will search trademark registries, business filings, phonebooks and other databases to identify others who are using your selected name, or one that is substantially similar. These services will let you know who is already using, and has secured rights to, your selected name or something close to it. With such a report in hand, you will have a pretty good idea of your ability to use, protect and create an identity around your name.

5. Consider federal trademark protection. You get some legal rights to a name just by using it in the operation of your business. But these common law rights are limited geographically to the areas of actual use, and generally will not prevent others from using the name elsewhere. Filing a trademark registration gives you constructive nationwide rights against all subsequent users. And others looking to select a name will be able to find your prior registration and will know you claim rights to use the mark throughout the United States. A registration has a 10-year renewable term, so it can stand for as long as you continue to use your mark and make the necessary filings.

6. The trademark registration process is fairly simple and economical. Consider protecting all key names you plan to use in the business or by which your products or services will be identified. An application is reviewed to assess whether your mark is sufficiently distinctive and whether there are prior registrations or applications that conflict. If your mark passes muster, it is published for public comment and if no opposition is filed, or is successful, the registration is issued.

And remember, when it is time to take your business international, the process starts all over again, as you must secure your rights in each country where you conduct business.

 

Chris Anderson is a partner at the law firm of Ballard Spahr Andrews & Ingersoll. He is in the Business and Finance Department and is also a member of the Technology and Emerging Companies Group, Mergers and Acquisitions Group, Securities Group, Private Equity Group and International Group. He practices primarily in the areas of business, securities and international law. 

 

Launch - May/June 2007

 

 

For the full "digital magazine" version of May/June 2007, visit: http://www.nxtbook.com/nxtbooks/growutah/launch0507/