Edward H. Schuth, Esq.Schuth | Venture Law Advisorse d @ v l a f i r m . c o mwww.vlaf i rm.com

Naming Your New Company

[INSERT NAME HERE]:

Upstart Forum’sMega Bites Series

2010

Edward Schuth

• Lawyer, Investor, Entrepreneur, Artist, Photographer, Sailer, Father and Dog Walker

• Founder & Attorney - Schuth | Venture Law Advisors

• Professor of Law

University of Illinois

Bachelor of ArtsSumma Cum Laude1992

Wake Forest University School of Law

Juris Doctor1995

Will the company name have brand value?

Who are your customers?

What are you selling?

Attributes of good brands and company names

• Naming is a mix of trademark law and marketing

• Your company name sets the framework for your brand

• Avoid the urge to be descriptive• Choose names that are evocative but lasting• This can mean suggestive or other terms that

connect with customers• You want something distinctive• And while cool is good, trendy can date you

• Web presence matters, even if your company isn’t .com’s

• Avoid names that will be difficult for search engines - hyphens, punctuation, even numbers

• You want a name you can own & protect• Avoid infringing others• Names you can register as a trademark• Protect from infringement from competitors

Suggestive(or arbitrary or fanciful)

DistinctiveLasting v.

Trendy

Web Presence

Own and Protect

Brand Value

Descriptiveor Generic

You cannot protect descriptive or generic terms.

Anyone can use this type of name

The BrickCompany

Personal Names

Personal names can be protected as trademarks

Links the company to an individual (which may or may not be a good idea)

Historical or fictitious figures can be used

Be very careful if you are using a name other than your own

Geographic Indications

Geographic references can be protected as trademarks

But they are harder to register and can be more difficult to enforce

Risk of dilution from other companies using the same geographic reference

Acronyms

Acronyms can be protected as trademarks, but are not as strong as other types of names

For the same reasons, they may not make good brands for your company

It is better to start with a full name and build equity in the abbreviation - such as IBM, HP or B of A

The strongest trademarks and brands

Suggestive

Arbitrary

Fanciful

• Not descriptive• Tells you something• Is evocative• These make good trademarks

• Real words, used arbitrarily• Not descriptive• Not mis-descriptive• Strong trademark protection

• Made up words• Can be evocative• Can be suggestive• Very strong as trademarks

Name Clearance Process

Availability as a corporate name

Secretary of State

If Available:Is the name purely

descriptive/generic or a possible brand?

If Not Available:Search for a new

name

If Not:You may adopt and use the name. You are at

greater risk for infringement.

Yes:File a Trademark

application with the USPTO

Consider international

If Not Clear:Search for a new

name

If Clear:Decide whether to

register the name as a trademark

If Possible Brand:Proceed with a

trademark clearance search and opinion

If Descriptive:You may adopt & use the name, but will not be able to protect it

Government Agencies• State level Secretaries of State• U.S.P.T.O.• Foreign Trademark Offices

• By Country• WIPO, CTM

• Be thoughtful about your circumstances

• Growth v. Local Company• Industry• Customer Attributes

• Be flexible

• Cool is ok, but trendy is bad

• Allow your company to grow and expand

• Be distinctive

• Easy for search engines

• Avoid hyphens, numbers, punctuation or attributes that will be hard to type into Google

• Remember that web presence matters, even for companies that are not “.com’s”

• Good branding practices

• Be emotive and meaningful if you can

• Lots of information on branding and marketing in books and online

• If you have the budget but not the time, consider hiring a marketing and naming consultant (although this can be expensive if you let it)

• Something you can own and protect - trademark

• It is not a brand if you can’t protect it

• Registration does not matter if you do not enforce

• Think about possible restrictions on expansion when choosing a name

Some Final Thoughts

SCHUTHVenture | Law | Advisors

www.vlaf irm.com