Given my Silicon Valley location, I often am consulted by entrepreneurs and start-ups who have just started a business and are seeking advice on how to protect their trademarks. However, more often than not, I quickly determine that the name that the entrepreneur or start-up has selected is a poor mark and my advice ends up being to think about changing the trademark immediately before the company gets further established and changing the mark becomes more difficult.
Why is it that this issue comes up so often? In all likelihood, it arises on a recurring basis because entrepreneurs starting a new business are so focused on other aspects of starting their company when they launch that they don't give the choice of name the attention it merits.
To be honest, I am guilty of this as well. When I started my law firm after the collapse of my prior firm, I barely gave the issue of naming my law firm any consideration. As a result, I did what many lawyers do and just began using my last name as the name of the firm. More than a decade later, I am still in private practice and continue to build my Silicon Valley firm, have become somewhat marketing-savvy, and I frequently find myself wishing I could rebrand. However, in today's world, the practical consequences of rebranding an established business are huge, since such a name change will affect your web presence, and in the case of a small firm that relies on its web presence to generate business, rebranding is a huge business risk that could have a tremendous upside or a huge downside. Also, there is the expense you will deal with in such a case of reprinting marketing materials, which can be very costly, depending on the extent of marketing materials, which have been printed for you. In my case, I made a significant investment early on in marketing materials which I might have reconsidered in retrospect. So, to date, I've done nothing but I continue having recurring thoughts of wishing I could easily facilitate a smart rebranding move. If only I could have been as business-savvy when I started my law firm as I now am more than a decade later. . . . but, as the familiar saying goes, hindsight is 20/20.
However, some entrepreneurs and start-ups end up selecting such a bad name initially that they have no choice but to rebrand, simply because at some point they retain a trademark attorney and realize that the mark they selected could be determined to be infringing another mark, or else because the owner of other mark holder sends them a cease and desist letter and actually threatens them with a lawsuit, and they realize that the most cost-effective and prudent manner of handling the situation is to simply rebrand and stop using the disputed trademark. While these entrepreneurs and start-ups have a different reason to rebrand, they often find themselves in the very same dilemma I find myself in: they realize that they will be essentially starting over with a clean slate on the web and they will lose whatever marketing foothold they\'ve previously achieved on the Internet by erasing their existing web presence, which can often be very detrimental to an established business.
A perhaps even more common scenario for entrepreneurs and start-ups to find themselves in is to realize--not that they are using an infringing mark but that they are using a completely unprotectable mark. Generally, the entrepreneurs and start-ups in this situation will discover that their mark is descriptive or has some other deficiency which will render in unprotectable with the USPTO.
So, what can a savvy entrepreneur or start-up do to proactively avoid finding themselves in a trademark dilemma down the road?
First and foremost, when you choose a name for a new business you need to determine if there is any possible way that the name you have chosen could be deemed to infringe on another company's business. While having a trademark attorney run some searches for you is ideal, you don't need a trademark lawyer to make this determination. You can visit the USPTO.gov website yourself and search for your proposed business name and any possible variations of your business name to see what comes up. If your name is so unique that your search generates no similar names, then you can move on to searching any possible variations or other spellings of your name to see if anything comes up. If something does come up in the search then you want to look for names that are similar to yours that are in the same industry as you will be or offer products and services similar to yours. If you find any similar marks, then you may want to give some consideration to changing your name. Obviously unique names are generally a safer choice than a common name.
Second of all, when you choose a name for a new business you need to avoid descriptive names. By descriptive I mean names that are based in any way on what your business will be doing. The USPTO will generally not grant a trademark on a descriptive name. There is a natural tendency for many entrepreneurs or start-ups to adopt clever, descriptive names, but those names will generally not be protected as trademarks by the USPTO. While being descriptive is not the only reason a trademark can be refused, it is probably the most common reason for refusal after being confusingly similar to another mark.
Third, as soon as you have the resources to do it, you should probably file an intent to use application with the USPTO to reserve your name. If you can file before you actually launch, this is ideal, since you will then know if your mark can be granted before you actually start using the mark in interstate commerce. Intent to use applications are usually fairly easy to file, but you will need to set aside enough funds to cover the USPTO filing fee and any legal expenses you incur.
The USPTO has published some information intended for public viewing about choosing a strong mark, which may be helpful to you in selecting your name at the following website: http://www.uspto.gov/trademarks-getting-started/trademark-basics.
All in all, I would encourage anyone starting a business to give serious thought to the choice of name very early in the process of launching a business and not postpone all such name related issues to a later date, as the investment of time and money early on can save you from having to throw out thousands of dollars in marketing materials or re-establish an established web presence down the road. It is far easier to choose the right name when you launch than it is to rebrand years later, which will inevitably be a risky proposition, even if handled in an optimal marketing fashion.