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Feb
17

Naming A New Product? Don’t Go It Alone!

Ever try to name a new product? If so, you might have created the name on your own or with a group of employees at your company. Perhaps you even had a contest to encourage everyone at your company to participate and name your great invention. You then contacted your attorney or legal department to file a U.S. trademark application and awaited registration. You thought you had done your job, but at that point your attorney likely advised you that she wanted to search the trademark for availability. More often than not your favorite trademark proved unavailable. Unfortunately, the trademark registries in the United States and around the world are crowded and companies are continually placing trademarks into use on products that are similar to yours. What this means is that it can be very difficult to name a new product without professional branding and legal assistance.

To increase your chance of successfully naming your product you may want to work with a branding agency that can develop many appropriate names for you, rather than just a few. You and your branding agency should work closely with your Trademark Attorney as you develop and review the candidates. If you do this the potential trademarks can be searched for availability before any decisions are made and you will save time and effort on your project.

The search process can be complicated. You must first determine the countries where you would like to obtain trademark rights. Trademarks are territorial in nature and your attorney will want to search the trademark in each country where you are interested in using and registering the trademark. If you are hoping for a global trademark, like Coca-Cola, which is registered and used around the world, this can be complex and expensive. Generally , when searching for global trademarks, attorneys will first conduct preliminary on-line “knock-out” searches in the major markets. That way not all of the candidates are searched in all countries. This saves time and money. Once a short list of viable candidates is established often a more comprehensive search will be undertaken in tiers of countries until the attorney can identify a trademark that is likely to be available in most countries.

Whether you are looking for a trademark in one country or throughout the world, you should be prepared to go through many lists of candidates before you find a few that are appropriate for your product and that are likely to be available for use and registration in your countries of interest. Be aware that global naming projects require much time and effort and are likely to last for many months. Once the final trademark (or trademarks) is determined the filing and registration process can begin. It will take several years before the trademark is registered globally. Of course your company will likely proceed with the launch before the trademark is registered everywhere but you should provide as much lead-time as possible for this process.

While this may seem like a daunting task, obtaining a protectable trademark may give you a significant advantage in the marketplace as you strive to differentiate your product from those of your competitors. Given the complexities of the naming, search and registration process and the importance of the name to your business it is well worth it to obtain the services of branding and legal professionals when naming your new product. You want to get this right!

About the author

Teresa H. Anzalone

Teresa is a Trademark Attorney with an MBA. She recently left the corporate world to join the law firm Symbus Law Group, LLC. Teresa is licensed to practice law in Pennsylvania. She directs the Pennsylvania office which is located in Gulph Mills, Montgomery County, Pa.