Choosing a brand name that lasts – Plan your filing strategy

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As a start-up, your brand name can be one of your most important assets. It is the identity tag by which you can stand out from the rest. Sometimes you have a specific brand name in mind already at an early stage. Other times, naming your brand can drag on and be an exhausting exercise. Either way, if the naming process is not made right initially, you can at a later stage be forced to drop the name you have come to love simply because someone else beat you to it. In order to avoid such disasters, we have outlined four easy steps to enhance your chances of getting a brand name that lasts. The first step is to select your brand name (check out the SynchBlog: Choosing a brand name that lasts – Select your message).

The second step is to plan your filing strategy. For this, it is important to consider the geographical extent of your business expansion. Most countries have a five year grace period, meaning that within five years you have to start using your trademark. Therefore, you have to know your plans for the coming five years; in which countries do you expect to make business in?

You also need to consider the different cultural and linguistic impact that a word can have in different countries. This can save you filing troubles, when your word is descriptive in another language, or even embarrassment, when your selected word has a less favourable meaning in relation to your business.

Do a proper background check

Before filing your trademark application, it is crucial that you do a clearance search. This means that you check that there are no existing rights that are identical or too similar to your name already on the market. By doing a clearance search, you avoid the costly and emotionally exhausting process of having to re-brand your company halfway through your launch.

Your commercial strategy defines how comprehensive your background check has to be and which countries you need to check in your clearance search.

There are a number of online tools available free of charge where you can perform a first screening. For example, TMView, hosted by EUIPO – the EU trade mark agency, contains trade mark applications and registrations valid in many individual countries, including all European countries, the USA, Turkey, South Korea and Mexico. You can also use searches on Google to get an idea of if your brand name is used already. Finally, you should check if there are similar domain names already in use.

The above databases will, however, only show you identical results in the registers. In order to make a qualified clearance search, it is advisable to contact a trade mark lawyer. A trade mark lawyer can further help you by giving a qualified a legal opinion on possible threats and obstacles to you brand, including a likelihood of confusion assessment, and also give advice on how to circumvent found obstacles. A trademark lawyer can also further assist and ensure your trade mark right once registered.

When you have planned your filing strategy, the next step is to file for registration. Want to know more? Check out the SynchBlog upcoming weeks.

For further information, please contact David Leffler.

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