Intellectual PropertyStart upsYour business


By September 13, 2018 March 13th, 2019 No Comments
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True story.  Two funders choose a name for their company and their product. After using the name, working on their financial software for years, and beta testing it with customers, they are ready to pull the trigger and start marketing.  They had incorporated and named the company after the product.  They had created a logotype and obtained stationary.

They even snagged a bank loan!  It is at this point they show up on my front door.  The bank wanted a pledge of the IP (copyright for the software and a trademark for the product’s name).  Guess what?  There is already Federally Registered Trademark for the identical name in the identical trademark class! They can’t use the product name they had been using for a few years.  Worse still, the registered mark pre-dated their use of the name by a few years.  They were unable to use the product name.  Besides the costs involved in changing the name on the paperwork, there was a terrible psychic cost.  These founders were so invested in the name they had real trouble switching to a new name.

Here is the lesson:  naming your product or service should be one of the later things you do.  The world today moves fast and a name that worked yesterday may not work today. You’ve got to be flexible and ready to pivot when you least expect it.

Here are considerations to remember:

  1. Your Company Name can be Anything. Each state has a list of requirements for a company name.  It must have Inc. or Corp. in the title. And certain words should be avoided like bank or museum. And each state is a little different.  But don’t sweat it.  Use a unique name for the corporation (or LLC) that no one will have.  How about your anniversary  “April Nineteenth, ”?
  2. Think of URLs. and Social Media. Let’s say you want to call your product “Greefco” for example.  Let’s make sure the top level domain name is available.  Is it available on Facebook? How about Twitter? Instagram? Google business?  The last thing you want to have happen is laying claim to the name for your product and then finding there is some nut job out there using Greefco for his tweets on the golden road to unlimited devotion (or whatever).
  3. Trademark Protection. Now you must go check and see if there are any pre-existing federally registered trademarks.  I checked, there are none for Greefco or even Greef.  But … there are a few for greif and even more for grief.  The United States Patent and Trademark office will look at phonetics.  You may need an attorney to make a special search.
  4. Now Choose your Company Name. You can file a “doing business as certificate” for April Nineteenth, Inc  that shows it does business as “Greefco.”  That is how most retail stores are named.  A hypothetical:  Queens Drug Mart is a d/b/a for Nathan Mart, Inc. Now circle back, get the URL, social media tied up and file an intent to use trademark application.

This not a hypothetical.  Many brands have different corporate names and dbas.  I am not sure of the entire history, but a product I use is called TextExpander®  was originally called Textpander.  It is now owned by Smile which is a dba for SmileOnMyMac LLC.

So our lesson is the perfect name you came up with for your product after many sleepless nights might be so perfect that someone else out there is using it. Save yourself a lot of greef, oops, I mean grief, and do not get so wed to your name it creates paralyzing frustration and anxiety if you must change it.

If you’re starting your business you will eventually name it.  You can’t call it Newco forever. Heed these warnings and you will avoid many of the name and trademark problems that trip up start-ups and growing companies. If you have other questions please call me at 212-903-4546 or schedule an appointment on my website