What's in a Name? How to Pick a Good Product Name9 May, 2011 By: Gregory J. Sater
Think of the product names you’ve seen over the years in the charts of Response Magazine: Pillow Pets, no! no!, PedEgg, Proactiv Solution, Shake Weight, Slap Chop, Swivel Sweeper, Snuggie, Zumba, ExtenZe, Ab Circle Pro, Your Baby Can Read – and so many more.
Picking a good name is extremely important. If you pick one the public doesn’t like, your product won’t sell. On the other hand, if you pick one the public loves, but it infringes someone’s trademark, you’re going be subject to an injunction and be held liable for their damages and your profits. Conversely, if under trademark law the name you pick is generic or weak or you don’t get it registered, you’ll probably see knockoffs popping up with impunity, using slightly different but still extremely similar names.
And, as if all of that weren’t a good enough reason to be thoughtful and deliberate in the process of picking your product’s name, you also need to think about the Federal Trade Commission (FTC). If they think the name you picked is deceptive, they can come after you. For all of these reasons, it’s a good idea to remind ourselves of some of the basics of picking a name.
First, see if the name you want is even available. Go to Uspto.gov and see if there are registered trademarks for it in the same or a similar class of goods. Go to a search engine and look through numerous pages – not just the first. And use an attorney to get a “full” search report ($300-$700 in cost, plus legal fees) including a “common law search” to find users who may be doing business under the name but without a trademark registration. They may have developed “common law” rights by their use, trumping trademark registrations filed subsequent to them!
Second, talk to a qualified attorney about whether you can keep others from using it. Invented names like “PedEgg,” arbitrary names like “no! no!” that don’t tell you anything about the kind of product it is, and suggestive names like “ExtenZe” that suggest something about the product but don’t describe it, are all protectable. Descriptive names are protectable too, but it’s harder to protect them because they require “secondary meaning” and if you haven’t even marketed your product yet, you won’t have that. The reason that’s important to know is that you really should apply to register the name as a trademark before you market the product. Registration can be done on an ITU or “intent to use” basis, and it makes that trademark yours in the U.S.
Apply to the U.S. Patent and Trademark Office on an ITU basis. Per class (plus legal fees), there is a $275 fee plus $100 later on, when you file a “statement of use.” Ideally, you also should apply to register in the major foreign territories in which you might sell the product, and in China.
Finally, remember that a deceptive name violates the FTC Act. When the FTC went after an electronic stimulation device called the “Ab Force” it said: “[A] product name can help [an] advertiser convey a claim about the central attributes of a product. The product name ‘Ab Force’ … suggests that consumers will achieve more forceful or well-developed abdominal muscles… [and] played an obvious role in conveying [the allegedly deceptive] implied claims.”