Wednesday, March 25, 2009

How to Clear the Trademark Hurdle

The U.S. Trademark Office receives over 1 million applications each year from businesses and individuals hoping to trademark a name for their precious new products, services and companies. How can you avoid doing a face plant on the fast track to trademark approval? Here are a few tips to help you clear the trademark hurdle.

Start with a Long List

With thousands of names fighting for a trademark each month, the chances that any one name is available are extremely slim.

That's why it's important when developing a new brand name to compile a long list of potential options. On any given project, most naming companies will generate 400 to 600 names and then narrow that list down to 15 or 20 names that are truly unique and memorable.

In my experience, out of a list of 20 supposedly unique names, at least half will already be trademarked and therefore off limits. That's why it's imperative to have a lots of good options to choose from before you begin the trademark process.

Get Some Help

You may ask, "But coming up with a half dozen names was tough enough, how am I supposed to come up hundreds?" Good question.

Here's a good answer: Use a team of 5 to 7 people to generate ideas. Give each person a goal of 50 names. Have them work alone and as a group. Seven times 50 equals 350 names. Voila! You've got your long list.

Give Yourself a "Distinct" Advantage

The U.S. Trademark office recognizes a "spectrum of distinctiveness," where the more unique the name, the easier it is for the owner be granted exclusive trademark rights.

On this spectrum, the easiest names to trademark are invented words like Google or Haagen-Dazs followed by suggestive names like BlackBerry or Amazon. The most difficult names to trademark are descriptive/generic names such as EasyPrint or Furniture Warehouse.

The Trademark Office frowns on descriptive and generic names because they can just as easily describe a host of competing products as well as your own. So if you're serious about securing a trademark for your new product or company, give yourself a distinct advantage by making the name as unique and distinctive as possible.

Don't Fall In Love

Many first-time new product namers fall into the same trap. They come up with a name that they fall madly in love with. So smitten are they that no other name will possibly do. This is the one forever and ever.

That is until the trademark attorneys break the bad news. The name of their dreams is betrothed to another. Already spoken for. The wedding's off.

That's why you can't afford to fall head-over-heels over a single name. Have at least 10 or 15 potential names you're willing to seriously consider. It's the only way to avoid getting left at the trademark alter.

Do a Preliminary Trademark Search

Once you have a short list of 15 or so favorite names, do a preliminary trademark search at the U.S. Patent and Trademark Office website ( Click on "Trademarks" and "Search TM Database". Then click on "New User Form Search (Basic)".

Search for each of the names on your list. You'll quickly discover which names are already in use. By clicking on each result you can see if the name falls in the same product classification as your own. If it does, remove it from your list of favorites.

Hire a Good IP Attorney

After doing a preliminary trademark search you should be left with at least a two or three excellent names for your new product or company. While it's possible to apply for a trademark yourself, I recommend hiring a good Intellectual Property (IP) attorney to file the trademark application. Successfully applying for a trademark in the proper classifications can be tricky and having a pro on your side can greatly expedite the process. Working hard to come up with unique names and doing a preliminary trademark search will make your attorney's job a lot easier - and your final bill a lot lower.

Cross the Finish Line a Winner

If you follow these simple guidelines - generate lots of potential names; don't fall I love with a single option; do a preliminary trademark search; and hire an attorney to file the application - you'll not only clear the trademark hurdle, you'll cross the brand name finish line a winner.

Jerry Stueber is Founder and CEO of Brain Donor - a strategic branding company serving corporations worldwide. Visit his website at

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