How To Steer Clients Away From A Name That Is Likely To Fail Trademark Screening

What to do when your client wants you to screen a name you already know they can't trademark.

When you’ve been naming for as long as we have, you have a pretty good sense for which names are not going to have a snowball’s chance in court of making it through even a preliminary trademark screening.

We’re betting it’s the same (if not more so) for IP attorneys -- you sometimes know when the name your client is asking you to screen is just not going to clear. In this situation, you have two choices: do the screening anyway, as requested, or let them know that you’re pretty sure it’s not going to clear, and suggest that they reconsider their request. 

You know your clients best, and obviously it’s up to you to decide how to proceed in this situation. If you choose to suggest they reconsider, it’s often helpful to provide them with a good explanation and a positive next step. The “good explanation” part you could probably cover in your sleep -- the name is too generic, most likely, or you’re already aware of competitors in the space and know that the name is taken. The positive next step is where we come in.

Send your clients our way, and we’re happy to provide a free consultation. We’ll answer their questions (likely for the second time) about why they can’t have the name they wanted, and we’ll get them excited about the idea that a different, better name is out there waiting for them. If they decide not to work with us, no biggie - at least we saved you some time. If they choose to work with us, great! We expect you’ll like the pre-screened name they come back to you with about three weeks from now.

Topics: guidance, legal