What's in a Name: Selecting and Securing the Right Name for Your Company

Published on 14th Jan 2015

So, you have come up with a fantastic new internet idea, app, or disruptive technology. Congratulations!

One of the many things you need to think about in order to turn your idea into a profitable business, is to select and secure a really outstanding name.

There are many things to consider when choosing a great company name, but here’s a key one: is this a name you can protect? Is it a name which you can gain legal ownership of, and therefore (when your fantastic idea really takes off) you can prevent others from imitating, or even flagrantly ripping off?

Good, effective brands are getting harder and harder to identify and protect: most of the best marks have been taken, and it is a very crowded market place for brand names. Even if you think you have come up with a brilliant, distinctive name, you need to do proper clearance checks to ensure that someone else does not have prior rights over the same, or a “confusingly similar” name. You would be surprised who might already have come up with that name. The best ways to do this are the following:

• Do a search of existing registered trademarks (this is best done by a trade mark professional)

• Check on domain names / obvious variants, and

• Do Google searches to see who might be using the name

Ignore this and it can be very expensive, either to have to change names, once significant marketing spend has been committed, and/or to have to buy out the name from the prior owner. Here is a recent and very true story:

A client of Osborne Clarke’s in the marketing data analytics space came up with a unique and marketable name a few years ago. They did the right thing: they checked it was available for their area of activity and then registered the brand as a trademark across Europe. They met with a potential business partner to offer them a chance to collaborate on a venture with this brand, but they stated that they did not want to take it forward.

About 18 months later they discovered that the other business had simply taken our client’s brand and was using it for digital advertising screens. Our client had to make a choice: either go to the expense of taking “Opposition” proceedings at the Trademark Registry, where it is likely they would have won, but which would have been inconvenient, time consuming and expensive, or alternatively, make a deal with the competitor.

The other side – a very large player in their industry – was initially arrogant and tried to crush our client. However, even though this was a David & Goliath situation, the bigger guys were forced into accepting a very limited licence, on terms favorable to our client. Otherwise, they were looking at seeing their ability to use the brand taken away from them entirely (and possibly pay damages). Our client (David) was able to humble the bigger player, because they properly applied for and received trademark registration clearance and registered the trademark.

The other player could have easily done the right thing, carried out simple checks, but did not. Or worse, maybe they thought that they could trounce them, despite our client’s registration. They were wrong. Getting a good, strong registered trademark is a very powerful weapon.

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* This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.

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