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May 2, 2006

Product Naming: The Trademarking Hurdle

ChapstickDid you know that the US Trademark office rejected a product name called Lotsa Suds? Or that well known brand names such as Tender Vittles, Chap Stick and Bufferin are actually very difficult trademarks to defend in court?

Trademark issues are becoming more and more complex and can bedevil a product name or brand name and a major part of what a naming company deals with on a daily basis. A recent article, , by Mark C. Jacobs, reminds us that a trademark is not a Service Mark and that trademarks are always “adjectives and not nouns". Jacobs means that there is no such thing as a "Buick" in the world of trademarks, but there is only a "Buick car".

I think that people who are not naming consultants may not be aware of a few other interesting things: it’s very hard to trademark a person’s last name and almost impossible to trademark a geographic name for a product or service that does not come from that place.

The fact is, if a trademark registration application is rejected, it is an incredible headache for the applicant. I believe that navigating these rough waters is part of the job of any good naming company that knows how to do the proper brand name research necessary to avoid trademark hassles.

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Posted by William Lozito at May 2, 2006 11:28 AM
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2 Comments

Good points. I think, now that the patent office database is searchable online, many companies (especially smaller ones) are just doing a quick search and not thinking about the value that marketers and attorneys can bring to the process. That can be costly down the road.

Exactly. The danger with doing an exact match search on the US Patent and Trademark Office's online database is that it does not search for marks that are likely to cause confusion, which is not a trivial question to answer. Unfortunately, a lot of people name their company or product without regard to trademark issues. And then they are shocked when they get a nasty cease and desist letter.

Sometimes, people mistakenly think that just because their Secretary of State accepted their business name, that they're free to use the name. Trouble is that most SOS offices determine conflicts based on whether the name is distinguishable upon the record. A much different (and more lax) standard than likelihood of confusion.

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