Tips for Selecting a New Brand Name

By Keely L. Herrick, Trademark Attorney, KHerrick LLC

If you avoid going to the dentist, would that save you from ever having a cavity? Certainly not, and if you do have a cavity, waiting to seek help can make the final resolution more painful and expensive. Well, many business owners approach brand protection the same way: they wait until they actually have a problem to reach out to a trademark lawyer. If you contact a trademark attorney to help you with the search and registration of your brand name early in the process, you can avoid wasting huge amounts of time, energy, and money in the long run.

1. Order a trademark search before you start using the mark. Once you have gotten used to a new product or service name, you can become emotionally attached, and if you learn that someone else has rights in the trademark, it can be difficult to resolve yourself to moving on to a different name. It also can be very expensive if you have to take products off the selling floor (or even a website) and to redesign packaging. Receiving a cease and desist letter is stressful for even the most seasoned businesswoman, and having a trademark search conducted by an experienced attorney can help to avoid that unpleasant surprise.

2. Give the attorney the benefit of your expertise. You know your industry better than your attorney, so give her a heads up if one of the terms in your chosen brand name has a special meaning within the industry, or if it is commonly used. Obviously, we all know what a sock or a t-shirt is, but if your company offers financial services or a specialized form of consulting, for example, the meaning behind your mark may not be obvious to someone outside of your industry. Also, if you know of others using similar marks, this information is helpful to allow your attorney to offer the most informed opinion.

3. Secure rights to any logos or graphic elements. You know your industry better than your attorney, so give her a heads up if one of the terms in your chosen brand name has a special meaning within the industry, or if it is commonly used. Obviously, we all know what a sock or a t-shirt is, but if your company offers financial services or a specialized form of consulting, for example, the meaning behind your mark may not be obvious to someone outside of your industry. Also, if you know of others using similar marks, this information is helpful to allow your attorney to offer the most informed opinion.

GWBC members should know that a little bit of time spent with a trademark attorney at the beginning of the brand selection process can result in big savings in the long run. And it’s generally more fun than visiting the dentist!

Keely Herrick, Managing Partner, KHerrick LLC focuses her practice on intellectual property law, including domestic and global trademark prosecution, clearance, opposition and cancellation actions, enforcement, and licensing as well as domain name disputes and copyright matters. Prior to her current position, she worked in the intellectual property department of Katten Muchin Rosenman in New York City and at a boutique intellectual property firm in Atlanta.

Keely L. Herrick
Managing Member
KHerrick LLC
keelyherrick@kherricklaw.com
(917)733-3487