Naming Your Products
by Yuko Watanabe


INTRODUCTION

  1. Basic Reference

This paper shows the process of naming products or services based on Naming Your Business and Its products and Service, Phillip G. Williams, Small Business Bookshelf Series, Vol. 2, (1991). Also, in order to update the information, the following articles are referred to:

  1. Allyn Taylor, Intellectual Property and Corporate Transactions, Journal of Proprietary

    2. Rights (1997)

  2. John D. Danforth, Effective Management of an International Trademark Portfolio, Patents, Copyrights, Trademarks, and Literary Property Course Handbook Series (1996)

  3. Susan E. Gidin, Researching Trademarks, Legal Information Alert (1998)

II. What are commercial names?

There exists three broad classes of names used in commerce:

  1. The trade name

    2. The name which designates a business - whether a sole proprietorship, a partnership, or a corporation - such as FORD MOTOR COMPANY, is called a trade name

  2. The trademark

    3. The brand names which designate a company's products, whether they are cars, cookies, or cassocks (for example, CAMERO, OREO, BEAUVEST), is termed a trademark

  3. The service mark

The name which designates the services that a business provides the public, for instance, HYATT LEGAL SERVICES or MR. GOODWRENCH, is called a service mark.

Trade name, trademark, and service marks may all employ designs as well as words as part of the identity of a particular company, its products, or its services. While designs are an important area in their own right, this book will focus on the verbal element of marks, the words that are used a names in commerce.

III. Every business needs a name

Trade name: Every company, from the smallest sole proprietorship to the largest multinationl corporation, has to bave a trade name .

Trademark and Service mark: Many business may construct either a brand name (trademark) or a service mark at some point.

IV. Importance of selection of trade names

All name used in commerce should be chosen with extreme care for two reasons:

  1. effectiveness: a well-crafted name, chosen with an eye to artistry as well as legal considerations becomes a very valuable business asset which, in the case of successful companies, may come to be worth literally millions of dollars.

  2. legal consideration: a commercial name already being used by another business may in itself result in an infringement law suit, and lose the reputation and goodwill that you have built around it, through advertising, promotion and conscientious service.

V. The purpose of trademarks, trade names, and service marks

From the oatmeal you eat for breakfast to the car you drive and the stockings you wear, you rely upon commercial names to communicate vital information about virtually every aspect of your life. The consumer will associate trade name, trademark, or service mark with a unique source of supply, to identify the provider or the organization, and the quality of the goods or services offered.

Once you have recognized the value of a good business name, what steps do you need to take to find a name or name for your business?

There is no one procedure for producing the right business name. Of course, you need to know the market of a particular business and the nature of its products or services. However, it would be helpful for your to know some of the main legal issues of business names. Especially, if you know some legal aspects which automatically eliminate certain typos of names and render others of highly questionable ones, you would save much cost and enjoy in naming process.

Then, you need to know the following matters to select business name:

    1. legal considerations in selecting business name;

    2. mechanics and aesthetics of business naming; and

    3. trademark search

 

LEGAL CONSIDERATIONS

  1. Trademark Law

    2. Article I, Section 8 of the Constitution of the United States grants Congress the power to establish a system of copyrights as well as a system of patents. Trademark law, by contrast, appears downright chaotic. No provision at all is made in the Constitution for trademarks. Consequently, both the federal and state governments have evolved trademark legislation which is overlapping in some areas and inconsistent in others.

    Whereas a patent protects one's rights to an invention and a copyright guards one's rights to written of musical works generally, a trademark (or service mark) is designed to protect its owner from unfair usage of the same mark, or a confusingly similar one, by another party.

  2. Federal v. State Trademark Law

  1. interstate and intrastate commerce

  1. Overview of use and registration of federal trademarks

  1. Two types of trademark filing process:

    1. Actual use: filing trademark application after using the mark in interstate commerce

    2. Intent to use: filing trademark application on the basis of a bona fide intent to use

  1. Definition of trademark use

In article sold and shipped across at least one state line with trademark actually attached to it meets the PTO's definition of putting the trademark into use in interstate commerce. An unregistered mark can still be successfully defended against infringement, although with much greater difficulty than a registered one.

  1. Process to get trademark registration

i) Conduct trademark search (explain in detail later) : to know same or similar name for the same class of goods already registered

    1. Application to PTO

      2. 'Actual use' or 'intent to use'

    2. Examination at PTO

      3. Your application will be examined by the staff to see if it conforms to the requirements of the Trademark Act, the most basic of which is that the mark not so resemble another mark in use as to cause confusion, mistake or deception when used on similar or related goods.

      Objection : You must respond to office action; otherwise, your application is

      finally rejected.

      or

      Publication for opposition: if no one challenges to your application within 30 days after publication, you will get notice of allowance.

    3. An affidavit of continued use in commerce (between 5 and 6 years)

    4. renewal: as long as the mark in use, the registration can be renewed every 10 years

  1. Use of ™ and ®

  1. You may use ™ for goods and SM for service to protect your mark regardless whether or not you have registered the mark.

  2. It is illegal to use ® unless you have registered the mark.

  1. Advantages of Registration on the Principal Register

Federal registration offers a number of advantages over and above those by common law rights and by a state registration such as:

  1. Constructive notice to the public of your ownership of and exclusive right to use the mark

  2. The right to sue an infringer, enforceable by any US district court, against an infringer, the right to recover lost profits plus damage, including treble damages for attorney fees, and the right to have infringing labels destroyed

  3. Your registration will become incontestable, provided it is not successfully challenged within five years from the filing date of your application

  4. Your registration can be filed with the US Customs Service to prevent goods with infringing marks from entering the country.

  5. Additional protection of the availability of criminal penalties against an infringer in an action for counterfeiting a registered trademark

  6. Basis for filing trademark applications in foreign countries under the Paris Convention

  1. Trade Names not Registrable

    2. It is very important to note that trademark per se cannot be registered with the PTO, although such names enjoy the same legal protection as trademarks and service marks. However, the same name not only designates a company, but it also serves to distinguish a product or product line or a service. The tipoff is any name which has a work like 'Incorporated', 'Limited', 'Company,' or a similar term or abbreviation as a part of it. Such names will usually fail the registration test.

    It is advisable, whenever possible, to follow the trademark with the generic name of the product, such as APPLE computer. A portion of the corporate name may often be used effectively as a trademark if it is combined with a design element.

    To obtain the same advantages provided by federal registration for your tradename, which is not in itself registrable, plan to use part of the trade name as a trade mark or service mark. Almost all large companies, from GENERAL MOTORS to IBM - and many astute smaller companies as well - use this tactic to legally protect two forms of commercial name (a trade name and a mark) with one linguistic shield.

    If your trade name conflicts with someone else's trade name, trademark or service mark, you may still be held legally liable.

  2. Genericide

    3. When the particular brands so successful, it ended up being completely identified win the public perception with all products of that class. The respective manufacturer lost the right to exclusive use of the name to design their product.

    Ex) Aspirin, cellophane, milk of magnesia, shredded wheat

  3. Seven types of commercial marks

While these categories do not include all possible types of trade names, trademarks, and service marks, they cover a great number of the commercial names in use.

  1. Personal Names

  2. Geographic Names

  3. Everyday English Words

  4. Foreign Words

  5. Puns

  6. Coined Words

  7. Number, Initials, and Acronyms

  1. Criteria for an acceptable mark

Your mark would not be allowed for registration by PTO if your mark is :

  1. confusingly similar to any other mark previously registered or used by someone else: "A confusingly similar mark is regarded by the PTO as one which would be likely to make buyers suppose that there is some connection between the two products or manufacturers when, in fact, none exists;

  2. obscene and scandalous mark;

  3. using a family name (in general);

  4. Geographic names which is descriptive of the origin of goods or services, unless it can be shown to have become distinctive through use;

  5. merely descriptive of products; and

  6. satiric, ironic, and parodic (not always)

  1. Principal and Supplemental Registers

Two types of federal registrars exist:

  1. Principal Register: a wide range of protections against infringes.

  2. Supplemental Register: available to a broad range of marks, phrases, slogans, labels, symbols, etc.

 

 

The Name Selection Process: Summary and Overview

  1. Overview

  1. Major type of commercial names effective and legally defendables

  1. Type of commercial names to be avoided

-lack of individuality

-difficult to find in the telephone directory

-rarely acceptable a registrable trademarks

There are some exception such as RCA and the IBMs; but they spent millions for promotion.

  1. Six Approaches to Naming

  1. Contests

    2. -best suited to already operating businesses that want to produce a new name

  2. Computer-generated words

    3. -While computers can play a role in name creation, it is imprint to remember that the work that the computer does is purely mechanical. It can give you lists of hundreds or thousands of words meeting certain specifications, but the human imagination is indispensable in sorting the wheat from the chaff.

  3. Shotgun approach

    4. -collecting potential names from all possible sources-dreams, the neighbor's children, free association, friends' suggestions. A long list may be compiled, and then a narrowing to a few deemed most appropriate is tried.

  4. Committee approach

    5. The committee selection is frequently tried as a level-headed, no-nonsense approach to commercial naming. It is important to have clearly in hand the criteria that such a search must adhere to.

  5. Creation of a song or advertisement

    6. In many cases, trademarks have developed out of an advertisement or song written to promote a particular product. The dramatization of the product or service in a commercial setting often does crystallize the name that is being sought.

  6. A voice crying in the wilderness

The linguistically savvy individual, equipped with a few basic principles, often prove to be the most effective name-finder or creator of all.

III. Sources of Naming

The successful name hunter must adopt a more analytical and structured approach to successfully trap his linguistic quarry.

  1. The 'as is' English word

    2. The resources of the language are quickly being exhausted in this way. Today a careful search must be conducted to determine if registered the same word to the proposed word is available for the purpose intended.

    Advantage: the same word can be (and generally is) used for many different categories of goods or services provided by different, unrelated companies.

    Ex) CASCADE for a detergent

    A good rule of thumb is that if the Patent and Trademark Office has already registered the same word to designate several different brands of goods or services, the word can generally be adopted to designate still other goods and services as well provided they are not related.

  2. The altered English word

Change a basic English word in order to create a new word to be used in commerce.

The most common techniques:

    1. adding a prefix or suffix such as -ette, porta-, -matic, pro-, -flex, -pro to an already existing word

      2. ex) STYLETTE, PORTA-GRILL, MAXIMOUSE, TELECROS

    2. joining two or more words together by overlapping a common element

      3. ex) STYLEDGE, STRIPPLEASE

    3. "gluing" two or more words together to create a new term

ex) PALMOLIVE, MILK-BONE, HONEY-COMB, KIMBERLEY-CLARK

  1. Coined words

    2. Create a new word which may be either suggestive or completely meaningless.

    ex) NYQUIL, KODAK

  2. Abandoned names

    3. You can legally take as your own a name which has been abandoned by someone else. TRADEMARKSCAN (explained in detail later) indicates the marks which have been abandoned and subsequently canceled by the PTO, going back to 1984.

  3. Foreign words

    4. Another source of names for use in commerce is the foreign word or phrase, whose meaning would ordinarily be suggestive of the product or service or appealing to the audience for which it is intended.

  4. Stolen names

Effective names have been taken from other products and recycled. For example, the name for CARNATION evaporated milk, for example, was suggested by CARNATION brand cigars.

IV. The Message

In the majority of instances of common English words employed in the naming of products, the name will imply certain values which the buyer shares. A trademark should be 1) short, 2) vigorous, 3) incapable of being misspelled to an extent that will destroy its identity, 4) it must means nothing. Also, the name should not use hyphens, if at all avoidable. It should be easily pronounceable. It should be memorable. It should lent itself well to graphic representation. It should, of course, be legally available. Finally, it should be attractive from a design point of view.

The Message 1: Symbols

The use of animal or plant names to symbolize values is a very important source of commercial names that should not be overlooked.

The Message 2: Mythological names

Mythological names also offer a rich vein of imagery which can e tapped in commercial naming. MIDAS mufflers, HELEN OF TROY cosmetics, AJAX cleanser exemplify this use of the names of mythic figures or places to personify certain values or convey information about business products or services.

The Message 3: Historical names

The names of mutual funds supply many examples of historical allusion which embody such values as thrift, wisdom, and steadfast devotion to principle, from the SPARTAN Money Market Fund to the FRANKLIN Group and the PURITAN Group.

The Message 4: Biblical names and Saints' names

The Bible is another excellent source of commercial names. The SAMSON CORDAGE CO., owners of the oldest trademark in America still in use, chose the biblical name of Samson as connotative of the strength of its rope.

The Message 5: Geographic names

The problem with geographic names used as business name that indicate actual place of origin, as already pointed out, is that they are not registrable and protectable legally unless they acquire a distinctiveness from continual use for a period of years.

The Message 6: Literary names

A relatively untapped area for new names is that offered by literary allusions, names drawn from novels, plays, poems, and other works of literature.

The Message 7: Puns

On the surface, puns appear to be anti-message, since they undermine the literal meaning of words. Through their humorous effects, however, they perhaps give us a deeper message.

The Message 8: Unintended meanings

Unintended meanings of words can work for or against your business goals. This issue normally comes up only if you will be exporting your products to other countries, or if you will be marketing to one or more ethnic subcultures in this country. The Chinese pictograms for the sounds of the brand name COCA-COLA contain the words for 'delicious' and 'pleasure' in Chinese, a lucky accident in this instance. In certain parts of Canada, BIG MACS is slang for large breasts.

V. Formulating the message

First, plan to invest a considerable amount of time and energy in formulating the precise message that you want your company or your product or service to convey. Your should do a detailed write up of the message about your company's identity and the nature of its goods and/or two pages of description covering all the relevant information.

Now, condense this statement into a short paragraph of four sentences, focusing on the mot significant benefits your company or product provides the public.

Distill the essence into one sentence. Be sure to single out the most compelling ones.

VI. Testing the name

Some recommend testing of potential names on consumers for their effectiveness. Such tests can run the gamut from a simple 'like' or 'dislike' evaluation of the choices in relation to a product description to much more in-depth analyses that rate the name for a number of different relevant factors.

To test for the memorability of a particular name, you can read to your chosen guinea persons a list of six names (including your test name) and ask them to repeat to you as many of the names as they can recall. The higher the recall rate for your prospective choice, the more memorable.

THE SEARCH IS ON

After you consider a suitable name, you will need to search other trademarks and service marks already in existence, both registered and unregistered, as well as trade names that might represent potential areas of conflict. The burden falls upon the individual to determine that the proposed mark does not violate the rights of other trademark and trade name holders. In the case of a trade name search, you need to explore not only other trade names but also trademarks and service marks, which might be the same as or deceptively similar to your chosen mark. Also, as trademarks or service mark do not have to be registered to be effective, you need search both registered and unregistered marks.

Then, the comprehensive trademark availability search should include searches of:

  1. Federal and state registration databases

  2. Common law resources, including

    3. (1) Internet's World Wide Web

    (2) Industry and trade directories

    (3) Internet domain name database

    (4) industry or subject-specific resources, if available

    (5) basic reference materials, where appropriate

  3. Shepard's United States Patents and Trademarks Citations for litigated trademarks

The primary test of a mark's availability is whether it is confusingly similar in appearance, sound, or meaning to another existing mark for a similar or related product or service.

  1. Federal and state registration databases

  1. Online

    2. TRADEMARKSCAN-FEDERAL

    TRADEMARKSCAN-STATE

    produced by Thomson and Thomson, both are available on-line on DIALOG (File 226 and DIALOG Web), WESTLAW (FIP-TM), COMPUSERVE, on the Internet as SAEGIS TRADEMARKSCAN (at http://www.thomson-thomson.com) and on CD-ROM through KNIGHT-RIDDER INFORMATION ON DISC.

    Trademarkscan-Federal provides traditional DIALOG searching with full-scan mid-word search capability, and is enhanced with cross references for variant spellings, phonetic equivalents, non-English words, numerals, and other irregular usages. The database is updated weekly on-line and monthly on DC-ROM.

  2. Print

-Brands and Their Companies published by Gale Research: alphabetical compilation of trademarks (brand names) and service marks, and includes some certification marks as well.

-PTO publications

- The Trademark Register

II. Common Law Resources

  1. the Internet's World Wide Web*

Use search engines, such as Yahoo, AltaVista and Infoseek

The searcher should truncate key terms to reveal variations as well as exact uses of the trademark.

  1. Industry and trade directory

Tools : Print or Electronic (online, CD-ROM, Internet)

    1. Print

Standard directories are in most public libraries

ii) Electronic - online, CD-ROM, Internet

*The search of news, product, and company directory telephone directory database databases can be accomplished beginning with an ALL-FILE (File 411 and on DIALOG Web) search on DIALOG. DIALOG is an excellent place to start because it contains all of the necessary product and company directory databases, as well as extensive new and trade journal databases.

Major databases:

DUNN & BRADSTREET ON DIALOG

THOMAS REGISTER ON DIALOG

STANDARD & POORS ON DIALOG

TRADEMANES FILE ON DIAGOL

BRANDS FIE ON DIALOG

PRODUCT ALERT FILE ON DIALOG

TRADEMARKSCAN data base

THE TRINET COMPANY data base

  1. Telephone directories

    2. Check the same or confusingly similar trade names as the trademark or service mark that you have selected. Larger public libraries have phone directories in their reference departments from all major US cities.

    Nationwide telephone directories are also available on the Internet, for example, BigBook's web, almost all commercial online service , as well as on CD-ROM.

  2. Domain name directory*

    3. Internet domain names can be searched on internet through InterNIC Registration Services.

  3. Industry or subject-specific resources

    4. Industry or subject-specific directories, dictionaries, registers, and publications should also be searched, when available for the product on which the mark will be used.

  4. Basic reference materials

Basic and geographic dictionaries, atlases, ad other basic reference materials should also be searched, when appropriate, as part of the comprehensive search.

 

III. Shepard's United States Patents and Trademarks Citations for litigated trademarks

A full search should also include a search of Shepard's United States patents and Trademarks Citations for litigation involving a mark.

IV. Tradename

  1. No state will let you do business under a name that someone else has already incorporated under in that particular state. Every state has procedures whereby you can check your proposed business name against a list of names of both the domestic and foreign corporations with a legal and business presence in your state.

  2. Examine as many telephone directories in your state as possible (ideally all of them) for business names that are the same as or very similar to yours.

  3. Consult telephone directories and industry directories at the library for listings of company names in other states, especially if you plan to be involved in interstate commerce.

Dun's Business Information Services: This is an alphabetical listing of the some 6 million US businesses that DUN and BRADSTREET has financial information about. A check of this listing will be a good indication if you have picked a name that is very common and used by many other companies or a distinctive moniker.

Million Dollar Directory: Another DUN and BRADSTREET information source including of some 160,000 company names, with addresses.

Thomas Register of American Manufacturers: listing of 135,000 manufacturing company names by industry with a separate trademark section

Ward's Business Directories: 3 volume reference work features 110,000 publicly and privately-held US corporations, as well as 15,000 foreign corporations.

Directories in Print: an annotated guide to over 10,000 business and industrial directories professional and scientific rosters, and directory data bases.

Remarks:

VI. General Preliminary Guidelines for Doing Either Manual or Computer Searches for Trademarks, Service markds, or rade names

    1. In the case of trademarks, identical matches of your name with already existing name for the same class of goods automatically rule out that particular name choice in most circumstances. On the other hand, if your are searching for a trade name's clearance, an existing trademark in any class of goods that is identical with your potential trade name must be taken into consideration.

    2. Do not be misled by spelling variants, run-on words, and other apparent differences.

    3. Marks that are almost the same for the same class of goods will ordinarily not be acceptable.

    4. Words from foreign languages that, translated, means the same as an already existing mark in the same or a related class of goods will not be allowed.

Caution: Always keep clearly in mind who your competitors are and the commercial names which they employ!

Avoid words that are difficult to pronounce. They will be hard to remember.

Finally, it should be kept in mind that NO SEARCH IS PERFECT--- every mark creates some degree of risk somewhere .

    1. all date bases have some limitations - eg. extensive times lag problem (months to years) in some foreign data bases

    2. Marks may be affected by unknown common law rights

In addition to creating the commercial names by yourself, there are several naming firms which provide services for creating names and conducting trademark search. The list of naming firms is attached in the next page.

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