Excuse Me, Is This Brand Name Taken?

4 Preliminary Steps for Checking Brand Name Availability

Choosing a brand name for your company or product line is a fun and sometimes challenging task. There is quite a bit that goes into coming up with something catchy, meaningful, and available.

Trademark infringement is a headache you'd do well to avoid. Of course you wouldn't intend to use someone else's brand name illegally, but it's easy to do by mistake. Imagine if you were to invest your time and money into creating your brand, only to get served papers insisting you need to change your brand name or be sued in court? The protection of your investments and longevity of your brand name require due diligence up front to make sure the name you want to use isn't already taken.

The most correct way to check for name availbility is to hire a trademark attorney to research prospective names for you. As you are already imagining, this is an expensive process. Large corporations (and companies intending to become large) have this done before any expense is invested in product development. What about small companies? What about sole proprietors? Yes, you also need to do your trademark research. It doesn't matter that you didn't intend to use someone else's brand name. What matters is who started using the brand name first. The only difference between you and a large company is budget; the laws are the same.

To save time and money, you can do some preliminary brand name availbility research on your own. Then you won't be paying a lawyer to check something unless it really looks available. In fact, if your name search comes up very clean, you might even skip the lawyer and go about trademarking it yourself. So before you fall in love with a brand name, and definitely before you start using it, try my 4 step name check process.

For the purpose of demonstration, let's see if the name "Jaya Skincare" is available.

Step 1: Do a basic internet search
I prefer to use Google. In the search box, enter the name you are checking. If it is more than one word, put quotation marks around it. That will make your results more relevant.

We are using "Jaya Skincare" as our example. Notice that there are sites with "Jaya" on them that also have "skincare" on them (did you notice my blogs and websites come up?) but there doesn't seem to be a company called "Jaya Skincare." Good. We passed this 1st check.

Step 2: See if the domain name is available (and buy it)
If someone else has already bought the ".com" version of your name, it may not be a good choice (unless their product is something completely different.) If it is available you should buy the domain name, partly because you might want to use it someday, and also because you don't want someone else to buy it away from you.

I prefer to use GoDaddy for buying my domains, so let's check. Wow! It's taken! http://www.jayaskincare.com/ is owned by a company in Illinois. Even though they don't have a website up yet, this shows intent. If I was really creating a brand name, I would go back to square one with a new name search. Since this is an example, let's keep going.

Step 3: Check the US Patent and Trademark Office website
The government has a website where you can search to see if a name is already trademarked. The good news is this saves you a lot of money by doing it yourself. The bad news is it's a government website, so it's clunky and confusing. Get your reading glasses out and follow along. Be sure to save this link! It's not easy to find by digging through the main site.

Here's the link: http://www.uspto.gov/ebc/index_tm.html
Click on the option that says "Search pending and registered trademarks." Now we have to select the search form. I'm going to use the one called, "New User Form Search (Basic)" and type Jaya Skincare (no quotation marks this time) in the search box. In this example, there is no trademark on file. We passed the 3rd check!

If the name was trademarked, we would have seen a long list of companies using it. Some of the companies might say "dead" next to the listing, meaning the name is expired. But if you were to see an "active" trademark for the same type of company/product as you, then don't proceed. Try another name.

Step 4: Has someone incorporated with that name?
If a company has already incorporated with your intended name, then it means they are serious about using it, and I would not proceed. Many states now have online search engines where you can see if a corporate name is available. A trademark attorney would check every state for you, but remember, we're just trying to do some preliminary research. I suggest that as a minimum, you check the state you are doing business in. Search for your state plus "corporate name search" and you should find the government website for your state (if your state has one.) Most states have separate search boxes for S and C corporations and LLC's. You need to check both. In this example, there are no companies incorporated as "Jaya Skincare." So it passes our 4th check!

Important note on DBA businesses. Small businesses (not incorporated) are registered through the county in which they operate. Few if any counties have an online search to see if DBA names are available. In my area, you have to go to the county registrar's office and look it up on the relatively ancient microfiche. This is a vulnerability in our self-search because a very tiny business in a remote county, anywhere in the US, could be using the name first and have legal rights to it.

This concludes our demo example. We passed 3 of the 4 checks. If I had been trying in earnest, I probably would not proceed with Jaya Skincare as a brand name. I'd come up with a variation or something completely different. Although if I felt really persistant, I might try contacting the owner of that domain name to see if they are serious about that brand name, and if not, ask if I can buy the domain from them. Don't get discouraged if your first choices are all taken. Keep going until you find something unique and available.

When you do find that perfect name, it will all come together. It's exciting! You'll know that your name was "meant to be yours." It takes marketing and business skills, but lady luck and fate are on your side, too.

Comments

[Pamela]

Welcome back!

Timely topic, and important for anyone who's considering building a brand that can be licensed. Intellectual property can be a key asset for many companies.

I have been dealing with trademark infringers for the past six months, due to some major national press. I thankfully had the foresight to register my trademarks a few years back, so all I've had to do is send a few legal letters and they've backed off. I'm fortunate that my corporate background taught me a few things on this topic, and I have a couple of comments to add:

1. Having a registered corporation does not afford you rights to a company name except in the state in which it is registered. There can be companies with the same name in different states. Federal trademarks trump state corporate registrations, so if someone has registered your corporate name as a trademark, they could (theoretically) come back to you and demand that you stop using it. When you file for a trademark there's a window of time when people can file a challenge to it, and this is when a company already using it might be able to stop the approval. Since most people don't spend their time monitoring trademark filings, it's really easy to miss this. But once it's approved, it's too bad, so sad, for you. All this is to say that a corporation-only registration is not necessarily a barrier to registering a trademark, you just need to be mindful that they might (if they're watching) file a challenge. But frankly, if they're watching, they would have already filed the trademark! This is why major corporations always file for incorporation and trademarks at the same time.

2. Trademarks trump domain names, so I wouldn't recommend buying a domain name until you've done the trademark search. If someone already has the trademark and you've registered a domain name that's a variation, you've just wasted your money since you cannot use that variation without violating their trademark.

3. Trademarks are registered by category (good & services). It's possible to have a situation where someone has already registered a mark but in a completely different field. You may still have a chance to register that mark for your own field, if there's no chance of confusion in the consumer's mind. This is something that a lawyer could advise you on.

[fordy]

If you're trying to find available domain names to match your brand name, you could try my website http://www.domainnamesoup.com

[Jaya Savannah]

Hi Pamela, GREAT additional info!

I want expand upon your 2nd point:

If you wait to register your domain name, then you might miss out on its availablity, and there's also been some domain name squatters who can detect what names are being searched and will buy your name right out from under you (happened to one of my clients.)

==> So do the trademark search and domain search at the same time. Don't try to split up your research over days/hours, only to find out that your domain name is no longer available.

[Shannon Moore]

Great article Jaya!

I wanted to add a caveat to Step #3, namely, checking the USPTO site. It's absolutely the first place to go in terms of doing a preliminary trademark search of the Federal files.

Unfortunately, this search engine is limited in a number of important ways. Let's take your example of Jaya Skincare.

1) What you put in is what it spits out: Doing a search on JAYA results in 12 records, 9 of those being live marks.

2) The SAM Rule: When determining if marks infringe, the USPTO pays attention to Sound, Appearance & Meaning -- http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120701bi

However, their search engine fails to do the same. For JAYA, I'd include in a comprehensive search variations such as Yaja, Jaja, Yaya, etc. to name a few.

3) It's missing State trademarks as well as Common-Law files, such as incorporations, DBAs, product announcements, etc. But those are areas that a comprehensive search should cover.

[Jaya Savannah]

Shannon, that is fascinating! Now that you mention the SAM rule, of course it makes sense that the search engine couldn't show that. You make an excellent point in favor of why the "proper" answer is to hire a legal researcher.

My post is the quick and dirty search process that I do, really meant as a way to save you time/money before hiring a pro.

Readers, if you click on Shannon's name in the above comment, you can visit her blog and/or find out more about hiring Shannon for your trademark research needs.

[Shannon Moore]

Hi Jaya,

Thanks for the kind words! And I absolutely agree -- folks should take advantage of as many free resources as possible.

Again, great article & I look forward to reading more. Thanks again!