Choosing a Name for Your Company or Products

The process of selecting a name for a company or a new product is daunting to say the least. Years ago one only needed to check availability of a name in the U.S. but with the advent of the internet and the globalization of commerce it has become essential to clear a name globally, especially if the intention is to put the name on a web site or the URL (domain name) is similar to the company or product name. In the late 1980s only about 50% of the names searched by trademark research firms failed to clear availability checks. By 1993 that percentage was up to over 70% and today it is estimated that the percentage hovers around 80% or higher. Those of us in the naming business talk of the Name Depletion Theory which simply states that we are running out of available names. The summary below outlines some of the issues that surround the “naming game” and provides suggestions for easing the process.

Global Access Requires Global Clearance:

As much as the internet was a US centric phenomenon it is no longer maintained or managed primarily by US citizens or organizations. Disputes over domain names can be handled by the World Intellectual Property Organization (WIPO) in Geneva and infringement cases can be addressed in state or federal courts in the US as well as respective courts in other countries. In other words, even though a company might be based in Tulsa, Oklahoma, if the owner chooses a domain name that was already a trademark of a company in England, Australia (or a host of other countries), it could be forced to surrender or quit using the domain name. If a business owner named their company the same as their domain name, the problems worsens because they might also end up having to change their business or product name. Just checking Google, Yahoo or the US Patent and Trademark Office (USPTO) for availability is generally not enough. Many names of products and services are not readily found on the Internet and registration at the USPTO, although highly desired, is not required. Professional trademark research firms (such as CT-CORSEARCH or Thomson & Thomson) generate revenue of over $200 million per year (on individual projects most costing less than $650). It is clear that most corporations do not rely solely on Google and Yahoo to clear a name and neither should your business..

Why Create a Unique Name?:

The natural tendency is to come up with a name that describes what the company does in order to make it easy for customers to find the business and associated products / services with the entity. While that methodology makes perfect sense, it’s wrong for two reasons.

First, a descriptive name (such as Brown Bag as a name for a brown bag) is generally incapable of being registered simply because it is not in society’s best interest to have sole ownership to a common term owned by one entity. Just imagine the problems that would occur if a company were allowed to register the words “wooden desk” as the name for their wooden desk product? Competitors would be prohibited from saying that their solid oak desk was a “wooden desk” or would be required to pay a royalty for each time they used the term “wooden desk.”

There are plenty of examples of trademarks that have become either descriptive or generic. For example, there was a time when “aspirin” was a registered trademark of Bayer (who also owed “heroin” as the name for a pain reliever). A listing of trademarks that have become generic can be found at http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks, Likewise, many companies undertake extensive efforts to try to stop their names from becoming generic or descriptive. For example, one makes copies on a Xerox brand machine. They do not Xerox originals to make copies. Similarly, one sneezes and needs a facial tissue. The tendency is to call that facial tissue Kleenex, when it is actually a brand of facial tissue.

The second problem with using descriptive names is that the likelihood of someone else already registering that domain name increases greatly. For example, while writing this article I made up a variety of descriptive names, added “.com” to them and went on the internet to see if there was an associated web site. I tried: skinnypeople.com, bestsaw.com, sharepestknife.com and nomoreheadaches.com. All were already registered as domain names and most had a web site up and running.

Names that are coined, fanciful or arbitrary such as Microsoft (from MICROcomputer SOFTware) or CORSEARCH (from going to the CORE of a computer and doing a SEARCH), or EXXON are far more valuable, easier to clear and protect than practically any other trademark.

Take a minute and think of 10 great trademarks: Marlboro, Kodak, Pepsi, Viagra, Verizon, ConAgra, Exxon, Corvette, Haagen-Daz or Google. These are words, (that other than their association with the products), have no meaning in any language. Hence, there is a reason why so many great trademarks are non-words They are much easier to register and protect.).

Some great examples in support of the position to create a unique name are (1) the person who set up a golfing promotion business and called it GOPRO; or the consulting business that took the first 2 letters of each of his children's names (TOm, PAt and TEd) to create TOPATE. You can assume that all minerals, Greek gods, mythological characters, elements, Latin phrases, etc. are already used.

The key here is to assume that every possible configuration for terms that describe what your business does has either already been used or is so generic that no one can use it. Terms like QuickConnect (no matter how it is spelled such as KWIXCONNEK) are already taken. Using terms like NutriPro or FreshTaste will rarely yield anything that can be either registered or protected.

Smart business check to see if their name is available as a .com, (assuming that you want to have the .com). The goal is to get to xxx.com (with xxx being the name you want to use) as a web site name. If the exact name doesn’t come up, perhaps adding team-xxx.com or using one of the new .biz or .us extensions will work. But remember, the first step is to have to clear trademark law before you take the domain name. If no one has registered thinkpad.biz don’t think that IBM is going to be happy if you register it and start marketing products and services under their trademark.

How to Create a New Name:

Twenty-five years ago when we heard the word WINDOWS, we thought of Anderson or Pella or one of the glass window companies. Not any longer. Twenty years ago the word APPLE conjured up a round piece of red fruit. Not so any more. APPLE for a computer is what is referred to as an incongruous trademark. It is actually a very good way to come up with a new name.

Entrepreneurs can also take pieces of words and put them together. For example, work with terms that mean something to you and drop off a letter or add a letter. Aperient is a medical term that refers to a passageway into the bowels The company using this name took the word, dropped off the "t" at the end, replaced the second "e" with an "a" and came up with Aperian, (a company with a direct connection to the Tier 1 Internet backbone so it was a "passageway into the bowels of the Internet.”).

Three Steps To Naming A Product or Business

Step 1: Write down a list of all the words that describe the product or business. If it is a food product the listing might include terms such as :Nutrition, Fruits, No Toxins, Organic, Fresh, or Natural.

Step 2: Break each word down to its syllables such as nutr, nutrit, tion, fruit, tox toxin, ins, or, organ, ganic, ic, fresh, nat, nature, ral.

Step 3: (See if the pieces can be put together to form a new word by combining various prefixes, infixes or suffixes. Nutranics (from Nutritious Organics) might not seem like a
great name at first blush but if it clears a search and the domain name is available, it might be just what is needed. (Try to imagine the debate that might have ensured when Standard Oil was presented with the name EXXON. It was computer generated using the XX because the XX is not used in any word in any language and would help ensure that the name had global availability. I can already hear the arguments about using a name that has a letter combination not used in any language. Think about a name such as Viagra. The word had no meaning until marketing and product success established an awareness. It could just as well have been placed on a nasal spray!

If a satisfactory term using syllables isn’t found then try looking at foreign translations synonyms. The name Illuminor was created listing terms associated with the business (mentoring, advising, consulting) and then noticing that an online dictionary defined “mentor” as “to illuminate or to shed the light”. “Illuminate” would not be a good name for a consulting business since it sounds too much light a lighting company. But dropping the “ate” suffix, adding an “or” suffix not only yielded an available trademark but also yielded a name for which the dot com domain name was open. The entire process took less than half an hour.

Finally, when piecing together words don’t think that you can take an existing trademark and modify it to create a new name. General Motors will most likely get upset if a business starts using a trademark such as Corvetteria regardless of what you are selling. (There are special protections for marks referred to as famous trademarks such as Google or Coca-Cola or McDonalds.) Likewise, EYEBEM (IBM) or Cocoa-Kola are not good choices unless you have lots of money to spend on attorneys.

If your product or company fails, such failure is unlikely due to name that was selected. Likewise, if the product or company succeeds such success is also unlikely to be attributed solely to the name. Success or failure usually can be associated with the quality of the product or service the company provides.

Identifying and selecting a new name can be a very frustrating and, at times, expensive endeavor. There are many firms and consultants that specialize in name generation. If the company is having a difficult time generating a new name they might consider the expertise of a consultant to be helpful in both generating and clearing new names.

Author's Bio: 

Robert M. Frank, Ph.D.
3102 Oak Lawn Avenue, Suite 700
Dallas, TX 75219
(512) 731-1303
bob@illuminorllc.com

EDUCATION:

Ph.D.-University of Missouri-Columbia, 1979
• Secondary Social Science Education
• Statistics & Research Methodology
• Psychology
B.S., M.ED., -University of Missouri-Columbia, 1974, 1975

AWARDS AND CIVIC PARTICIPATION:

• Recipient, Honorary Doctorate of Humane Letters, University of Missouri-St. Louis, December, 2006
• Recipient, Outstanding Achievement Award, University of Missouri – Columbia Alumni, Association, 1998 and 2006
• Recipient, College of Education Dean’s Award for the Innovative Uses of Technology in Education and Research Award, University of Missouri - St. Louis, 2006
• Chair / Co-Chair International Trademark Association US Patent and Trademark Office Automation Sub-committee, 1990-1996
• Co-Chair International Trademark Association Internet Domain Names Task Force, 1991-1993
• Member, Board of Governors, International Trademark Asssociation / Brand Names Education Foundation, 1992-1996
• Member, Texas Angel Investors, 1999-2001
• Member, Development Council, University of Missouri, 1994-1998
• Member, Dean’s Cabinet, College of Education, University of Missouri 1994-1998
• Member, National Steering Committee, University of Missouri-Columbia 2000 to present
• Recipient “Outstanding Instructional Professor” awards from University of Missouri and Ithaca College

PROFESSIONAL SERVICES TO TRADEMARK PRACTITIONERS:

Dr. Robert (Bob) Frank combines over 20 years of academic, research and analytical trademark experience to assist trademark attorneys to better manage the creation, implementation and presentation of expert reports. Combining his extensive practical experience gained from founding, growing and managing CT-CORSEARCH to become the world’s second largest trademark research firm with his doctoral and post-doctoral training, practicum and employment, Dr. Frank delivers an intellectual property resource unavailable elsewhere. For trademark litigation he offers consulting assistance concentrated in three areas.

Third party use for “generic” and “descriptive” cases

• Create a properly designed research project to prove or dispute generic or descriptive use
• Identify the proper universe and sample populations
• Complete data collection including “use” investigations
• Data Analysis - test hypotheses, if appropriate
• Develop testimonial expert report or appropriate declarations

Independent critique and review of survey methodology

• Critique and evaluate survey questions for both “face” and “construct” validity (Do the respondents interpret the question as anticipated or desired?)
• Independent validation of survey company research design
• Define survey universe population
• Analyze survey of sample population, findings and conclusions

Presentation refinement for survey or other expert witnesses

• Hands-on mentoring of experts in the art and science of presenting complex or technical information to juries or judges
• Practical guidance in connection with organization and presentation of expert report

PROFESSIONAL EXPERIENCE

Illuminor LLC Dallas, TX
President 2005-present

Bluespan, Inc. Austin, TX
Founder and CEO 2001-2006

MSI Holdings / Aperian, Inc. Austin, TX
Chief Operating Office and Executive Vice President 1999 - 2000

Corsearch, Inc. New York, NY
Founder, CEO and President 1983 - 1998

Ithaca College Ithaca, NY
Adjunct Professor 1982 - 1983

Cornell University Ithaca, NY
Research Associate and Associate Professor 1979 - 1981

University of Missouri-Columbia Columbia, MO
Teaching and Instructional Associate 1977-1979

Southern Boone County Schools Ashland, MO
Secondary Social Studies Teacher 1975-1977

TRADEMARK PUBLICATIONS AND PRESENTATIONS

• Cybernames-Domain Name Issues and Conflicts in Cyberspace, Patent and Trademark Institute of Canada, Canadian Intellectual Property Review, Vol. 12, No. 2, August, 1996.

• Final Report--Phase I Report of the INTA Internet Task Force (co-author), The International Trademark Association, July, 1995.

• Much Ado About the Internet (A Primer) An INTA Bulletin Special Report (co-author), The International Trademark Association, February, 1995.

• “Trademarks: Managing Risk and Asset Value,” presented at Intellectual Property Management: Developing a Corporate Intellectual Property Strategy, April 6-7, 1998, New York, NY.

• "The Evolution and Future of Internet Domain Names", American Bar Association Annual Meeting, ABA/YLD Division, August 4, 1996; New York State Bar Association, Intellectual Property Law Section, September 14, 1996.

• "Current Status of Problems Involving Internet Domain Names and Trademark Conflicts", The New Jersey Trademark Circle, Bayonne, New Jersey, February 14, 1996; New York State Bar Intellectual Property Law Association, February 16, 1996.

• "Domain Names and Trademark Infringement", National Science Foundation Conference (Internet Names, Numbers and Beyond; Issues in the Coordination, Privatization, and Internationalization of the Internet), The Kennedy School at Annenberg Program Offices, Washington, D.C., November 20, 1995.

EDUCATIONAL PUBLICATIONS AND PRESENTATIONS

• Frank, Robert M. What I REALLY Learned in College (Commencement Address, University of Missouri-St. Louis College of Education, December 17, 2006)

• Frank, Robert M. Life Skills (This paper was presented at the 2006 University of Missouri-St. Louis College of Education Alumni Association Awards Banquet, May 5, 2006)

• Frank, Robert M. Attribute and Attitude Assessment of Community College Graduates and Leavers, 1983. (This article was presented at the Annual Meeting of the American Educational Research Association, 67th Annual Meeting, Montreal, Canada)

• Frank, Robert M. Preparing IEPs for CBVE Programs, Vocational Aspects of Education, V34 n89 p83-87, Dec. 1982. ERIC #EJ 279011

• Frank, Robert M. Individualizing Vocational Education, Vocational Aspects of Education: V33, n84, p1-4, April, 1981. ERIC #EJ 250807.

• Frank, Robert Instructional Planning. Final Report. ISSOE Managing Student Progress, 1981. Cornell Institute of Occupational Education, Cornell University, Ithaca, NY ERIC # ED 217177.

• Dunn, James A., Frank, Robert M. ISSOE: Managing Student Progress. Field Test. Phase I, Final Report, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199527.

• Dunn, James A., Frank, Robert M., Ridley, Dennis. Managing ISSOE Programs. Administrative Issues: Technical Report Number One, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 194747.

• Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, Developing Student Profiles. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199517.

• Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret Planning Student Progress. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199518.

• Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, Reporting Student Progress. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199519.

• Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, Student Decision Making. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199520.

• Dunn, James A., Frank, Robert M., Ridley, Dennis, Carmichael, Mary Margaret, System Overview. ISSOE: Managing Student Progress, 1980. Cornell Institute for Occupational Education, Cornell University, Ithaca, NY ERIC # ED 199521.

• Beuke, Vernon; Frank, Robert. ISSOE Student Guidance and Development of Personalized Occupational Education Programs. Findings and Recommendations, 1979. Cornell Institute of Occupational Education, Cornell University, Ithaca, NY ERIC # ED 181241.