Co-written by Will Montague, intellectual property attorney.
King Henry III took over the throne at the age of nine and was a bread enthusiast. He passed legislation requiring bakers to create unique identifiers to distinguish their bread from others in the market. In other words, they needed good names. After 800 years of incremental improvement, I can say that Bread Zeppelin is the apex of brand naming.
Okay, maybe there is still room for improvement. This article is for those of you who are hiring an agency to create a name and intend to register the trademark. Most naming agencies don’t have an attorney on staff, and most attorneys don’t create brand names. So, we work together to make it easy for you to have a strong name. Here is how we do it:
The criteria can include tones, memorability, and preferred metaphors. It usually includes something about the URL. We help you decide if a common-law trademark is sufficient for your business or if you should register a trademark. We also help you understand what types of names are “inherently distinctive” according to the United States Patent and Trademark Office (USPTO).
Focused name generation
The best ideas come from divergence. Our name generation process breaks us out of typical thinking patterns. We create names using different types of construction, from real words to made-up words and everything in between. We also consider the meaning of the words in relation to how you will use the name. Again, we are helping you develop a name that is “distinctive” in your context. These types of names act as lane lines as we generate the first 200 or more names.
We use our expertise and the criteria we established to cut the list to approximately 50. Next, we do an industry search to make sure the names don’t have any easily identifiable direct competition within the industry vertical.
Broader landscape search
Simultaneously, we do a broader search of the internet to uncover potential surprises. Are there potential competitors? Are there unintended negative connotations?
A preliminary state and national search
Once we eliminate names with conflicts, we look at your Secretary of State and the USPTO websites. We aren’t providing trademark advice, but it gives us a sense of whether 6 or 600 companies have registered a particular name and in what industry.
Clearance and analysis
This step is sometimes called the knockout search. It is covered below. It is part of the naming process, but a trademark attorney does it.
Help you decide
We use the above steps to cut to around 25 names. After small group testing, we will present between 10 and 15 names to you. Together, we review the criteria and cut the list to the top candidates. While we are fairly certain you could successfully register all of the names as a trademark; there are occasional surprises. Because of that, we recommend picking the top two or three to move to the next phase.
There are three loose steps to registering a trademark. The first step overlaps with the naming work your agency does. The second step is the registration process, itself. And the third step is potential post-registration needs you might have.
Clearance and analysis
Once you have a shortlist of names, we can work with you or your naming agency to do trademark clearance searches and analyses. Some companies decide to skip over it to save money, but it’s an investment that can reduce risk down the road. If you decide to do this, we will collaborate to see what similar businesses are operating under a similar name or brand and whether they have filed trademark applications. This work gives us the confidence to move into the next step, applying to register your mark with the USPTO.
We will help you prepare an application to register a trademark in the trademark classes most important to your business. We submit the filing online along with anything else needed. Due to a backlog at the USPTO, it generally takes six to nine months to receive an initial decision from the USPTO. You can use your name while you wait if you’re comfortable doing so (especially if you’ve done clearance and analysis work), but the sooner you file, the sooner you’ll hear something official from the USPTO. Also, if you do business outside of the US, we can help you by filing an international application for specific countries or regions.
After you have your registered trademark, there are filings you’ll need to make every five or ten years to keep the registration alive. Also, the USPTO might check periodically to ensure you are still using your trademark as registered since businesses often change without realizing that the USPTO requires notification of certain changes. We can help monitor your trademark registration and discuss those situations with you so there isn’t a disruption in your business.