Legal 10111 Feb 2014
What’s the hardest part of the naming process?
For some it might be coming up with viable name ideas in the first place. But, for most people, overcoming trademark obstacles is the hardest factor.
With over 3 million trademarks in the USPTO (United States Patent and Trademark Office) database, finding available names can feel like an almost impossible task.
Typing a name idea into the USPTO will give a quick read on the name’s viability (the same can be done via Google search) but legal viability is more complex with lots of grey area that require evaluation and analysis by a trademark attorney.
Fundamentally, there are three levels of legal checks that we perform on naming projects, as outlined below:
Level 1: This is an “identicals” check performed in the USPTO database. This check eliminates any obvious conflict, but does not check for other names that may be phonetically similar. This type of check is performed during the name development process.
Level 2: A preliminary check conducted by our affiliate legal counsel. Our affiliate legal counsel doesn’t give a definitive answer of “available” or “not available”, rather, they evaluate the risk profile of the name, advising on how much risk (and what kind of risk) each name brings with it. This type of search checks all categories of trademarks, as well as common law usage, and does include some phonetically-similar variations. This is a very prudent step prior to pushing a name into a more costly and time consuming Level 3 check.
Level 3: This is the final “full” legal check that searches all matches including phonetically similar, names with similar root words, etc. Results from this search are delivered in a phone-book-sized document that your TM attorney will review to ensure the lowest possible amount of risk in your new name.
*Note that this process applies to the US only. While many other countries/regions use a similar process, they do vary.
If a name clears all 3 levels of legal searches, it’s very unlikely (though even then–still not impossible), that anyone will challenge that name. If challenged, a name that clears all 3 levels has a very good chance of being successfully defended.