It can be difficult to “move on” when the team has fallen in love with a name which later fails to clear trademark testing. In fact, it usually means you have to go back to the drawing board to generate a whole new “short list” of names, because everything else just feels like settling. This is why it’s important that a trademark pre-screening process happen BEFORE names are presented. Did you know 90% of names created by professional namers fail to clear trademark screening? Yup, you heard that right… 90%. So we work for days to generate a ginormous list of names, knowing most of them will die. It's our job to spare clients that agony. Often we repeat this process multiple times for a single project -- and we do "common law" screening on top of the USPTO.gov screening, just in case names are in use but not registered. It happens all. the. time.
Sometimes clients will come to us with names they've brainstormed themselves, or the agency we're partnering with will have a list of their own. We are always happy to pre-screen these lists, too. Part of our job is helping clients find a name they love and feel comfortable with, and we certainly don't want there to be any lingering questions to the tune of "Why can't we have THIS name? It's perfect!" It can be eye-opening for clients to see just how hard it really is to find a name that is truly ownable, and nothing makes this point more quickly than seeing a list of their own names die, and understanding why.
To reach that understanding, here are the questions we often answer:
Q: What if we change the spelling?
A: Trademark approvals are all about whether there's a chance of consumer confusion. So phonetic similarity is very important here. Imagine launching a software company named Mykrowsopht or a ride-sharing company named Ooober. This is why we rack and wrack our brains looking for alternative spellings that could be a problem.
Q: What if the name is being used, but there isn't a trademark filed?
A: If a name is in use, even if the company never properly filed for a trademark, the law says that it belongs to them.That's why we do a "common law" screening, in addition to searching through the USPTO databases. Better to find this out upfront and avoid the problem altogether than to receive a cease and desist letter or be dragged in to court as soon as your name has become well-known enough to make you a target.
Q: What if the name is being used in a different category?
A: It depends. Sometimes this is technically legal, but not strategically advisable. For example, if the name in question is very well-known in an unrelated category, you may succeed in registering the mark in your trademark classes, but struggle with your target consumer making unwanted associations to that other brand. We recently dismissed the name “Ioniq” for a software company when we discovered Hyundai was 18 months from launching a car with the same name. Even with a headstart, we knew that was a race the Hyundai would win.
Q: What if the name is being used in a different geographic region?
A: Again, it depends... and gets a little complicated. Identical brands for identical goods and services can coexist in different geographic regions. If the brand we’re working on has no plans to expand beyond a given region, we need only be concerned with brands in that region and brands that “may” expand into that region. If our client is the one with expansion plans, then the name must be clear in all future regions – so those other “little regional brands” become a big issue.
If a beloved name dies as a result of these explanations, there may be temporary heartbreak, but it's nothing compared to how painful it would be to have to go through a name change after time and resources have been invested in building the brand. After answering these questions, it becomes much easier to move forward with evaluating the list of names that survived pre-screening, rather than looking wistfully in the rearview mirror at those that didn't.
So, from our list of pre-screened names, the client selects their favorites (we usually recommend 4-6), and then the IP attorney takes over. We’re not lawyers, but we’ve been doing this for a lot of years, and have an 80% success rate at identifying trademark issues. The remaining 20% covers the ones we missed (yeah, it happens) and the subjective side of trademark law. A significant part of “availability” comes down to risk tolerance, and that varies widely from client to client (and from client's lawyer to client's lawyer).
Whether you work with namers who do pre-screen names (like us) or other creatives who don't, it's always important to bring in a lawyer for a full trademark screening before choosing a name. The pre-screening step is often overlooked, but its value shouldn't be underestimated. If your namers have pre-screened their list prior to presentation, names that don’t have a solid chance of clearing trademark are never even considered, and clients won’t need to pay an attorney for multiple rounds of trademark screening.
Bottom line: pre-screening saves you time. And we all know what time is, right? Money.