What's In a Name?

As a business owner, one of your first decisions is the name of your company/product/service. It is, after all, your corporate identity. There is nothing worse than being forced to change your name once you have begun doing business because of a cease and desist letter or an application refusal from the US Patent and Trademark Office. The first plan of action: do not get attached to your trademark until it is yours officially.

Here are a few best practices in finding that name:

1. Be creative! The best trademarks are made up names or words that have nothing to do with your goods/services.

2. Don’t merely describe your product. If you sell shiny orange balls, don’t think you can register Shiny Orange Balls; it is merely descriptive and generally not allowed to register on the principal register.

3. Do not use your personal name. We all want to be famous, but unless you are, chances are the trademark office will not let you register on the principal register.

4. Incorporate under a different name. Unless you already have the trademark, don’t put all your eggs in one basket. Plus, you’re limiting yourself to one product for your business.

5. Brainstorm with your attorney. You should have the kind of relationship with your attorney that you can brainstorm with them. You should be able to start by sending your attorney a list of possible names. An experienced trademark attorney can guide you to a mark that can get through the trademark application process successfully, without too much push back from the Trademark Office. Think of your attorney as your marketing partner.

I am a small business myself so I understand the need to cut costs. I also learned the hard way that some costs are better spent lest you pay for it dearly later. That being said, I strongly advise against do it yourself trademark solutions. While you might be part of the lucky few that it works for, I’ve seen too many do it yourself trademark applications go bad for a variety of reasons. If you do decide to do it yourself, be aware of the following common mistakes.

One common mistake is not doing a comprehensive search. In the trademark process there are two searches. The initial search is a knock out search which usually entails a search of the USPTO database and a search across common search engines. A knock out search will usually tell you if you are clear to go on to the next search which is a comprehensive search. (Side note, by all means, you should do a knock out search on your own before you think seriously about using a particular trade name.) A comprehensive search will come up with an exhaustive list of possible bars to your registration through searches of the Federal and State Registers as well as common law uses, domain names, news sources, etc.

Another common mistake is not addressing the issues properly on an office action issued by the Trademark Office. After you file your application, the Trademark Office may send a letter called an ‘office action’ that may ask you to amend your description, submit specimens, disclaim a word or may even initially refuse your mark because the examining attorney feels that it may be confusingly similar to another mark. You then have six months to respond to this letter. An office action can be confusing, and the answers need to exactly address the issues raised by the examining attorney. Even a mere procedural issue addressed in the office action could potentially escalate to a final refusal or abandonment of the application. So in this case it’s best to put in the time, research and resources on the front end, rather than being disappointed after the final decision has been made. If you still decide to answer the office action on your own, here’s a tip: there is a phone number for the examining attorney at the end of the letter. Use it. The examining attorneys are often very helpful.

My point is not to tell you to run out to your nearest trademark attorney and hire him or her lest something bad will happen to your trade name; rather, keep an open mind. Do not latch on to the first name you think of, do not proceed with a ‘let’s hope for the best’ attitude. Do your homework, make sure no one else is using the name and if they are, find another one. After all, it is about brand recognition and with that comes consistency. It would be a shame to build up momentum in your business only to have to start again with a new name.


Natalie Sulimani, founder of Sulimani Law Firm, graduated from the University of Manchester at Kiryat Ono, Israel with an LLB. Shortly after graduating, she moved back to New York to pursue her career in law where she worked in commercial litigation and later as in-house counsel for a start up company. In each of her roles, one theme kept presenting itself: the importance of intellectual property in the online world. Recognizing this critical new niche in the legal world, Natalie honed her skills to understand trademark, copyright and internet law and technology, in general. Now she pursues this field through her own practice and brings that knowledge and experience to you.
Natalie lives in New York City with her husband Ben and sons Gabriel and Eli.



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