Incorporation typically includes registration of a corporate name. Some entrepreneurs do not realize, however, that corporate name registration alone is unlikely to provide trademark protection. Even worse, although state entities responsible for name registration usually reject names that are identical to or nearly identical to existing names, they will not make a likelihood of confusion analysis necessary to determine possible trademark infringement. Registration will not allow a company to avoid trademark infringement allegations if it registers a name that is confusingly similar to a competitor’s name. Further, the registration of a corporate name is not sufficient to ensure a desired internet domain name for a website is available. For these reasons, it is often useful to devote some time and resources to vetting corporate names, trademarks, and service marks before devoting substantial resources to developing goodwill in that name or mark.
For instance, it is often a good idea to select a name that is available for corporate registration and is also a name that may be available for use as a trademark for the goods or services of the company. Often, selecting a name that may be utilized in a domain address for the company’s website is also an important consideration to ensure that an easily findable Internet website can be developed for communicating with possible business partners, developing brand awareness and growing the business of the company.
Select A Name That Should Avoid Trademark Infringement And Is Protectable
Selecting a name that may also be available for use as a trademark can also help ensure that the company is able to develop goodwill with consumers of its goods or services. This can allow the mark to become a valuable intellectual property asset to the company. To select such a trademark, it is often a good idea to perform searching to try and ensure that the selected trademark will avoid infringement of competitors’ trademarks and may be suitable for applying for a federal trademark registration with the U.S. Patent and Trademark Office (USPTO).
When selecting a mark, remember that the best marks are “coined” terms that were not previously used for any purpose in the United States. These marks are typically easier to enforce and obtain than other marks, and domain names for coined terms are more likely to be available. If a coined term is not appealing, consider an “arbitrary” term, which is a word that is commonly used in a context separate from the business. “Suggestive” terms can also be useful as trademarks, though care must be taken to avoid terms that describe the goods or services that will be offered by the company. In general, a good trademark will not tell a third party exactly what goods and services will be offered unless the third party has more information on the company.
Trademark searching often involves Internet searching of trademark applications and registrations that have been filed with the USPTO, though more comprehensive searches including state trademark databases and other resources may be ordered. In addition to performing a search to help ensure the selected name can avoid trademark infringement issues, the name that is selected should be a name that is not generic of the company’s services or goods, is not functional to such goods or services, and is otherwise a name that can be relatively easy to protect as a trademark. This way, if a competitor later tries to adopt usage of the trademark selected by the company, the company can be in a position to enforce the rights it has accrued in the trademark.
Consider Filing An Intent To Use Trademark Application To Protect The Selected Mark
Prior to using a selected trademark as a good or service, a company can also file an “intent to use” trademark application with the USPTO. Such an application can be examined by the USPTO prior to the company using the mark as a trademark. If the application is allowed, the mark can become registered as a trademark after the company starts using the mark. If the application is denied, the denial can help identify a possible issue that could require the company to pivot to a new trademark. This can often be helpful when the trademark was selected without having been cleared by a thorough search, as such an issue can be identified prior to the company investing substantial time in developing brand awareness for a problematic mark. “Intent to use” applications may only be applied for if the applicant has a “good faith” plan to use the mark; applicants may not register multiple marks with the intent to only use one and reserve the others (called “warehousing” of trademarks).
Consider Verifying That The Selected Mark Can Be Adequately Utilized In A Domain Name
Prior to investing substantial time or money into developing consumer recognition of a mark, ensure that the selected name can be utilized in a domain name for a website. Searching domain name registrations for a suitable domain name may also help identify potential conflicting uses. If a third party has already registered a domain name, later registration of a mark included in the domain name will not permit the trademark registrant to force a transfer of the domain name to the registrant.