By Art Shaffer

In today's fiercely competitive marketplace, the ability to characterize, differentiate and distinguish your products and services from those of your competitors has made the business of choosing the right name an increasingly difficult and troubling process.

Twenty years ago, a business brand was developed internally, by off-the-cuff executives, or with the help of ad agencies. Quite often, internal development led to descriptive names, such as International Business Machines or General Electric, which were not readily protectable. Today's competitive marketplace has become crowded with brand names. It's becoming difficult to find a good brand name, because many of the good names are already in use. Experts believe that 99 percent of the time, some portion of a "new" business name is already in use.

Consequently, it is difficult to find the right name, even after hours of research, investigation, marketing analysis and counseling. Once a brand name does appeal to the owner and the owner's friends, family and colleagues, the inclination is to announce the new brand name to the world. Unfortunately, this can be one of the worst things to do at this point in the branding process.

Coming up with a name, slogan or logo that will be helpful in branding your company or product in the marketplace is only the initial step in your quest for business success. By using a distinctive name, slogan or logo (collectively referred to as a "mark") in connection with your products or services, you create a brand that helps your customers readily differentiate your products or services from your competition. By investigating, analyzing and protecting your mark before rolling it out, you may avoid potential problems down the road.

Investigating
Before using the new brand, investigate whether someone else is using it by looking at local phone directories and performing an Internet search using Google or Yahoo. In addition, investigating online phone and business directories, such as YellowPages.com, Superpages.com or Hoovers.com may also uncover another company using your desired mark, or even something similar. Next, search your Secretary of State's records to determine if the name has been registered in your state. Many Secretary of State offices provide this service through their Web sites.
You should also investigate whether someone has registered the desired mark on the state's trademark registry. In addition, investigate if someone has registered or applied for registration of the mark with the U.S. Trademark Office. You can do a federal search using the online database at www.uspto.gov.

It's often a good idea to hire someone to conduct a U.S. clearance search, covering common law, state and national use to determine if another business is using your mark in connection with similar products or services. If you plan on using your mark on the Internet, you should check if someone has already registered a domain name with your mark; if not, you should register it. If the domain name has been registered, you should check who owns it. Be sure to consider registering misspellings or similar names to maximize the strength of your mark and to minimize any potential Internet confusion.

As a point of differentiation, remember that a mark may be different than a company's corporate name. The XYZ Corporation may offer a hammer under the brand name MAXHAM, for example. Even though the XYZ Corporation corporate name may be registered with the Secretary of State, MAXHAM, a brand name, may or may not be registered.

Analyzing
Next you should analyze whether your mark is-and to what degree it is-protectable. Under trademark law, a business using a unique and distinctive mark in commerce in connection with its products or services has a protectable interest in that mark. However, the mark must be distinctive (i.e., arbitrary or fanciful, not generic or descriptive). For example, Shumana Sam's would be easier to protect in connection with software services than The Software Guy, because the former is seemingly fanciful or arbitrary and the latter seems to be merely descriptive of the product or services offered.

In addition to being distinctive, the mark must not be confusingly similar (in the eyes of consumers) to a mark used by another company in connection with the same or similar products or services. If you wanted to name your hamburger stand Burger Queen, for example, you may have issues with Burger King, or they with you. Priority based on two protectable marks, which are identical or confusingly similar, goes to the first user of the mark against a later user, even if the later user applies for and receives federal or state registration of their mark. However, after five years of registration, there is a presumption of priority.

Protecting
After investigating and analyzing your new mark, you should protect it.. Although registration is not necessary for protection, registration of your mark does provide some valuable benefits. In addition, to providing an ability to enforce your rights, it may assist in providing notice to others of your use of the mark and it may prevent others from choosing the same or similar mark. Registration also provides an ability to enforce your rights in your mark.

While it's possible to register a mark yourself, the process can be long and difficult. An intellectual property attorney can be invaluable in securing your rights.

In deciding to register your mark, you may choose local, national and/or international protection. Some factors to consider include evaluating where you will use the mark, where your potential customers are located and where your competition is located. If you have registered your mark with the U.S. Trademark Office, you should use the registration notice ((r)) and use the mark in a distinctive way, such as capitalizing the initial letter or the whole word. For an unregistered mark, use the "TM" designation for products or "SM" for services. Also, never use your mark as a noun; for example: "A MAXHAM is the first choice of carpenters." Instead, always treat your mark as an adjective: "MAXHAM hammers are the first choice of carpenters." You can lose your rights in a mark if it becomes synonymous with the thing it describes (e.g., thermos, cellophane).

If you determine that someone else is using your mark, or a name or brand confusingly similar to yours, you should take action to stop them.
Ultimately, a mark can be a valuable asset to a growing company. If you develop and protect your mark properly, you can avoid many problems later and help ensure growth of your company's brand within the marketplace.

Art Shaffer is an attorney with Intellectual Property Center specializing in patents, trademarks and copyrights.  You can reach him at (816) 363-1555 or .