4 Tips Every Person Naming Something Must Know

Unlike the naming process, which is a creative process, the trademark search process is scientific, and the evaluation of the trademark search results follows certain rules. Learn the process and the rules and you will be conducting trademark searches like a pro. Follow the tips in this post while conducting a trademark search and interpreting the results, and you will develop a list of names that you or your client will be able to use. So, print this post and keep it nearby. Do enough trademark searching and eventually, you will not have to refer to this post during the naming process because these tips will become second nature.

  1. Break up the name you are searching before worrying about different spellings. The Trademark Office is more likely to refuse to register a name because it shares a common element with a prior registered mark than because the marks sound the same. Additionally, breaking up a name and using the right Wildcard symbols (see Tip No. 2) will more often than not return different spellings of the name you are searching for. However, if you are aware of alternate spellings of the name you are searching, then include them in your trademark search plan. Breaking up a name and searching similar spellings are not mutually exclusive.
  2. If you are using BOB to conduct your trademark search (and you should) use the $$ and OR Wildcard symbols frequently. After breaking up the name you are searching place the double dollar sign ($$) on either side of each name part in Column D in BOB’s Trademark Search Worksheet and the OR symbol in between each name part. For example, if the name you are searching is CALIBURGER use the Wildcard symbols like this:  $$CALI$$ OR $$BURGER$$. Follow this format for all the names you search during the naming process, and you will find all the potentially problematic marks that you need to consider.
  3. The relatedness of goods or services matter, not International Class Numbers. There are opportunities for similar trademarks to exist within the same International Class Number. Don’t reject a name just because there is a similar name in the same International Class Number. Conversely, a similar mark in a different International Class Number can be problematic if the goods or services are related. Here is how to tell if goods or services are related:
    • If the goods or services are competitive, then they are related.
    • If the goods or services are not competitive, then they are related if:  (A) the goods or services are complementary; (B) the goods or services are marketed under the same or similar conditions to the same general class(es) of purchasers; or (C) the goods or services are the types that could reasonably be licensed by the prior trademark owner.
  4. Multiple trademark owners using the same term for the same or similar goods or services means you can use it too. PROVIDED you combine it with another term that is different than the term another trademark owner is using. For example, there are multiple trademark owners using the term BERRY for yogurt:  PINKBERRY, YOGIBERRY, SWIRLBERRY, TRUBERRY, FUNKIBERRY, BRRRBERRY, CHERRYBERRY, and COWBERRY. This means you can use BERRY too if it is combined with something that is different than what has already been attached to BERRY. Psst – this one reason why we break up the mark when we search.

Study Shows Correlation Between A Trademark Filing And Growth

"working paper title about the benefits of a trademark filing"

When dealing with intangible property, it is often hard for a business owner to understand why money should be spent on, for example, a trademark filing. Obtaining a trademark registration can be expensive depending on the path the business owner chooses when starting the trademark registration journey. And the effects of that decision to make a trademark filing may go unnoticed or the positive effects of that decision may be misattributed to something else in the business.

A working paper titled An Anatomy of U.S. Firms Seeking Trademark Registration was recently published by the National Bureau of Economic Research, and it may provide the clarity and understanding business owners need to see that a trademark filing makes a business money. The working paper was also released in perfect timing with the U.S. Senate’s Resolution to Increase Trademark Protection Awareness.

The study created a new dataset by combining the USPTO trademark filing data with firm characteristics, performance, and dynamics in the United States as reported by the U.S. Census Bureau. The paper then provided a first look at the connection between a trademark filing and the broader measures of firm outcomes.

The study found that a trademark filing is highly correlated with the ultimate success of an early entrepreneurship activity including employment and revenue growth. Firms that do not apply for a trademark registration in their initial years are unlikely to do so unless they experience employment growth. However, difference-in-differences analysis suggests sizable treatment effects, with firms making a trademark filing having substantially higher employment and greater revenue in the period following the first trademark filing.

Hopefully, this paper will be peer-reviewed and ultimately validated because, if accurate, it provides businesses with the most valuable justification for protecting a trademark: namely, that it likely will make you money.  More businesses need to recognize the importance of filing trademark applications and the data suggests that too few businesses understand this. According to the Kauffman Startup Index in 2017 there were about 540,000 new business owners each month during the year. That means for the entire year there were about 6.5 million new business owners in 2017. However, through the third quarter of 2018, there are only 480,111 new trademark applications that have been filed in 2018.

Every business, whether a startup or established enterprise, should pursue trademark protection for not only its business name, but also the names of its goods or services. But if you are going to spend the money to protect your brand, you might as well do it wisely. Engage a naming firm to help with the design of a new name and conduct a trademark search to make sure the name is available.

Parody of Music Names in Branding

"picture of a music concert representing trademark parody"

Parody is something that seeps into the branding process from time to time. Depending on the good or service, parody of a recognizable music name could be appropriate. Esquire magazine highlighted the ten most memorable music parody brands. Our favorite was DON A HENLEY AND TAKE IT EASY for clothing.

In trademark law, there is nothing illegal about drawing inspiration from something for a name. Where the line is crossed is when the manifestation of that inspiration is likely to cause confusion with another party’s trademark. The Trademark Trial and Appeal Board has found on multiple occasions that the right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use is likely to cause confusion.

What this presumes is that the music name functions as a trademark in the first place, and trademarks cannot exist in a vacuum. Trademarks must attach to a good or service. In the case of music names that most likely means that the band or musician name attaches to primarily entertaining services. This is significant because trademark rights are limited to the goods or services they are used in connection with plus what would be considered a natural zone of expansion.

Unfortunately for DJ Khaled, that means his trademark infringement complaint filed against Curtis Bordenave and Business Moves Consulting Inc. d/b/a Business Consulting over trademark applications filed for DJ Khaled’s 18-month old son’s name ASAHD, ASAHD COUTURE, and A.S.A.H.D. A SON AND HIS DAD for clothing and magazine publishing services will likely fail. DJ Khaled named his son an acronym A.S.A.H.D., which means A SON AND HIS DAD.

This acronym has not been used with any goods or services, so there are no trademark rights associated with the acronym. Moreover, whatever notoriety DJ Khaled has in his name, that does not transfer to his son’s name. What his case demonstrates is that you need to know thy enemy when you select a name, which we have to assume the defendants fully anticipated in this case.