Trademark Toolkit for In-House Counsel: “Can We Trademark This?”

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Authors: Jennifer L. Dean

At a Glance

In-house counsel often field branding questions — including whether names are available and protectable.
Using our roadmap during early branding discussions with your business team will help save time and effort.

Most in-house counsel periodically encounter branding questions — and the business team wants answers … yesterday! To give you a head start, this article discusses key branding questions that companies frequently face and provides a roadmap for addressing it.

Can I Trademark/Patent/Copyright This Name?

Let’s find out!

For starters, let’s clarify. This common intellectual property (IP) inquiry relates to trademarks — words and symbols that identify your company’s products and services, distinguishing them from competitors’ products and services. In contrast, patents protect inventions, and copyright law protects original works of authorship like photos, books and musical compositions.

Consider posing the following questions to the business team. Their answers will build a foundation for you and your IP counsel to assess whether a trademark is available and protectable, and determine how much investment is warranted.

	Questions for Business Team	Reason for Questions
1	Do you mean, (a): can we use this name without risk of third-party objections; (b) can we stop competitors from using this name; (c) can we register this name with the Trademark Office; or (d) all of the above?	To clarify the business team’s objectives and to assess whether a trademark search will suffice and/or if trademark registrations are desired.
2	Have we used any version of this name before? If so, since what date? Was our use of the name ever interrupted, and if so, for how long?	To assess whether a trademark search is necessary and whether your company can claim rights in the name already.
3	Is the name a term of art, or does it have any other significance in our industry?	To assess whether the name is registrable or whether the name is so descriptive or generic that it is free for everyone to use.
4	Is the name an acronym, and if so, what does it stand for?	To inform trademark search efforts.
5	When do you plan to launch the name?	To determine how quickly any searches must be conducted and to assess whether a U.S. trademark application can remain in force until launch.
6	Have you or a marketing agency run any informal cursory trademark searches or internet searches for the proposed name? If so, please share the results with me.	While deeper, formal trademark searches are usually recommended, informal searches sometimes identify fatal obstacles to use and registration of names. Knowing the results of informal searches may help you eliminate unavailable names early in the process.
7	Will this name be difficult, time-consuming and costly to change if someone objects to our use or registration of the name? How quickly and inexpensively could the name be phased out?	To determine whether a deep-dive trademark search is necessary and to assist in developing backup plans. Note: It can be challenging and time-consuming to change names requiring regulatory approval, so extra caution is often warranted under those circumstances.
8	Was the name inspired by any competitors’ brands, and if so, which?	You’re hoping for a “no” answer here, in an effort to avoid trademark infringement accusations.
9	What product or service will this name identify?	To increase the precision of any trademark searches and to complete trademark application requirements.
10	Will this product or service have a long lifespan?	To help determine whether trademark registrations are warranted. If the name will only be used for a short time, registration may not be worthwhile.
11	In what geographical areas will we use this name?	To determine where any trademark searches should be conducted or focused and where any trademark applications should be filed (e.g., certain states, throughout the U.S., in other countries).
12	How important will this name be, overall? Is this a “crown jewel” brand, or is it less important?	To help determine how much to invest in searches and trademark applications.
13	Who designed the logo?	To identify whether your company owns all rights in the artwork, or if an agreement with an external creator specifies who owns the rights.
14	Will the logo always appear in the same format and color?	To support trademark application strategy.
15	Will you need to register a domain name that incorporates the new name?	To identify whether a desired domain name is available and to manage budget if the domain’s price is significant.

Obtaining the above answers during early discussions with your business team will save considerable time and effort (and reduce the risk of unpleasant surprises) in the long run. The payoff? A brand that can live forever. Feel free to send any questions our way. Happy branding!