Wes O’Donnell is an Army Infantry and Air Force veteran with 10 years of service. He is currently the Managing Editor of inmilitary.com/inmilitary and is a highly sought after presenter who has recently spoken at TEDx on Data Visualization and is speaking at the US Air Force Academy on Leadership. Most importantly, Wes is a veteran and believes that when all 21.8 million of us are united, we can change the world. Connect with Wes on LinkedIn.
“When I’m old and dying, I plan to look back on my life and say ‘wow, that was an adventure,’ not ‘wow, I sure felt safe.’ “
—Tom Preston-Werner, Github co-founder
Naming your business seems like it would be one of the easier tasks on the road to owning your own company. What should be a fun exercise can actually be quite stressful. You want to make sure that you choose a name that will stand the test of time and, if possible, encompass both your personal core values and your company’s values. Let’s take a look at some crucial things to consider before settling on a final name and then we’ll look at trademark law and domain names.
Naming Your Company
As a veteran entrepreneur, you’re likely willing to be bold in your choice of names. Here are some ways to turn your instinct into a name worthy of the brand that you’re trying to create:
First, a good name should be simple. It should be easy to spell and pronounce and mean something to your customers and distributors, not just to you. Any time you have to explain your name or apologize for it, you’re taking value away from your brand. For example, take one on my companies’ names, MD-Advantages. I cannot count the number of times that I have had to clarify to a customer or potential partner that there is a hyphen in between the MD and the Advantages. “Oh, and I sincerely apologize Mr. High-Value-Customer; your emails haven’t been getting through because Advantages is plural and you have been leaving the “s” off.” I learned quickly that a change needed to be made and so I began calling the company MDA in all of my interactions.
Don’t be a copycat. It might be tempting to leverage the power of an already established, popular brand name and tweak it a little. But even if you evade the trademark police (not a real thing), savvy customers will still see what you’re doing for what it is: a complete lack of creativity on your part at best and shady business practices at worst. The only people that can get away with this are the grocery store generic brands of products that try to look like their name brand counterparts as much as possible. Instead of Cheerios they have Toasty-Os; instead of Dr. Pepper they have Dr. Thunder… You get the idea.
Avoid the “Mash Up” method of naming. This happens when a normally literate and sane aspiring business owner takes a part of an adjective and smashes it into a noun. For instance, “QualiServe” for your brand new service-oriented company or Ameri- followed by Tech, Corp or Tron or any other such tomfoolery. By using a hyphen in MD-Advantages, I’m partially guilty of this crime. Luckily, Modern Workspace is solid in this regard. In fact, let’s just make a rule right now: If your spell check in any normal word processing program says your name is misspelled, think of a new one.
Avoid the cliché of business naming. When thinking of a business name your brain will more than likely start with a mental list of literal names. Once you’ve exhausted that, you’ll move on to descriptive names. And after that, you’ll start thinking of metaphors. Stop! Go back to the beginning and start fresh. If I may be frank, metaphors stink. Everybody thinks that their business is at the top of their industry, or will be soon, so companies with names like Apex, Summit and Pinnacle keep popping up. This naming convention is tired and overused. Keep searching.
One last thing. Don’t name the business after yourself. Having your name in the business name sends the signal that the company is a one-person operation. Also, “Frank’s Furniture” doesn’t do a very good job of telling your company’s back story. You need to be thinking about the future. When the time comes, it will be easier to sell your company and cash out if your name isn’t tied to it. The only people that can get away with this narcissistic behavior are investment firms like Merrill Lynch, law firms like Pulaski & Roberts and certain high-profile physicians.
Should You File For a Trademark?
Here’s a common misconception: “You have to register for a trademark for your business name or logo to protect it against infringers.” Wrong. If you’re operating a business in the United States, Canada, or England, it’s not necessary to file. You don’t need to do anything to acquire trademark rights and protect your brand other than use your trademark in connection with your goods or services. You automatically get those rights. It’s the same situation when you write or produce a written creative work: a copyright is granted instantaneously.
So what’s the point of federal trademark registration? Think of it like this: If a parasite attempts to use my brand without my permission, and I want to litigate against him, it will be more trouble to win an infringement case in court if I don’t get federal protection. Difficult to win, yes; but not impossible. If I register a trademark with the federal government, it’s pretty clear exactly when my rights to my name and logo became effective. Without official registration, I will have to dig up a bunch of business documents proving that I have been transacting for a certain length of time. I may very well win the case, but it could eat up additional time to win the case and in Lawyer-Land, time is money.
What did Modern Workspace do? Well, as a small business start-up with limited funds, I didn’t see the need to get an official trademark. As soon as you open for business, you’re allowed to put the “™” after your name or logo to indicate to the world that you consider “Company X” to be protected. This is usually sufficient to scare off any would-be parasites. You are not allowed, however, to use the circle R, “®”, until you have gone through the federal trademark process. Besides that, I am a meticulous record-keeper. I have no problem providing documents showing my historical business transactions were I forced to defend my mark. To any future parasites reading this and thinking that Modern Workspace is unprotected, you’re on notice: “We will litigate the heck out of you™”. Oh look, I just trademarked Modern Workspace’s new company slogan. See how easy that was?
“I hear you, Wes. But I want to be extra careful and get federal protection anyways.”
No problem. Let’s take a look at the categories of trademark strength so that you can pick one that’s defensible for your needs.
Picking a Defensible Trademark
There are ultimately five categories of trademark strength, and the category that your company’s name fits into determines how well you can protect your trademark against parasites.
If you do end up going to court, a multi-part test will be applied to assess the likelihood of a consumer confusing your trademark with someone else’s. The first test gauges the similarity in sight, sound and meaning, between the two marks, while the second one considers the similarity of the goods or services being sold.
Surprisingly, many small businesses simply choose a name without doing substantial research to see if someone else already holds a trademark for it. Start by doing a name search of your company here: http://www.uspto.gov/index.jsp If you do properly secure the trademark you then hold it for between five and 10 years, depending on your location, before you renew it or lose it.
What determines the strength of a trademark?
Trademark strength can be determined by fitting a mark into one of the following categories:
Fanciful marks – Coined. No dictionary meaning. Fanciful marks are completely made up, which means they had no meaning before they were used as trademarks. This is considered to be the strongest type of trademark because it only refers to the source of goods and services bearing the mark. Examples include EXXON, XEROX, KODAK, CHEX, HYDROX, and POLAROID.
Arbitrary marks – Arbitrary words used out of context. These consist of common English words used in contexts where their normal meaning has no relationship to the goods and services they’re being applied to. Examples include OCEAN SPRAY which is juice and CAMEL which are cigarettes.
Suggestive marks – Suggestive hints at or suggests the nature/attribute of a product. These indirectly refer to the goods and services that they are associated with and require some imagination on the part of the consumer. Examples include HAMBURGER HELPER which is dinner mix and SLIM FAST which are meal replacement drinks.
Descriptive marks – Describes product, ingredients or attributes. These marks describe the goods and services they are being used to market. Though they are initially weak, these marks can be registered if you can show that consumers associate them with only one company. This can usually only be successfully registered after advertising heavily for a period of five years. Examples include VISION CENTER which is an optical center and EXTRA STRENGTH which is Aspirin.
Generic marks – These marks are not protectable at all and cannot be registered because they describe a whole group of goods or services, which makes it impossible to distinguish one product within the group from another. For example, trying to trademark your company name if your company was called baking soda or telephone.
Protecting Your Mark
It’s like a kick in the stomach for an entrepreneur when one comes across another business that’s been using a mark similar to your own and potentially using your name to make transactions.
First, you should begin by contacting your lawyer and having him or her construct a cease and desist letter to the infringing company. However, you need to do your homework first and make absolutely sure that you have been using the mark for longer. If not, you have just kicked open the door to invite the other company to file against you for infringing on them!
The good news is that about two thirds of the time these disputes can be settled out of court. In any case, follow the advice of a good business lawyer when and if this situation arises.
Domain Names
According to Google, Domain names (often simply called domains) are easy-to-remember names associated with particular IP addresses. For instance, the domain name example.com might translate to 198.102.434.8. This makes it much easier to remember a website’s Uniform Resource Locator (URL).
Examples of domain names are google.com and wikipedia.org. Owners of these domain names can create different subdomains such as www.google.com, docs.google.com, www.wikipedia.org, and en.wikipedia.org.
It is crucial to the success of your business that you choose the right domain name, particularly when transacting online in an ecommerce storefront. As we discussed earlier regarding trademarks, the moment you start doing business online under a particular domain name, you automatically possess a trademark for that name as your domain immediately becomes your DBA (Doing Business As) name even if your company’s name is slightly different.
If you have a good idea of what you want to name your company and you’ve performed a trademark search at the USPTO website to make sure that there will be no conflicts between you and an already existing company, then there are several domain registrars out there to choose from.
I have heard great things from two registrars in particular: Name.com and 1&1. However, I currently use GoDaddy for my registrations. Now a word on GoDaddy… People are polarized on their feelings about GoDaddy. And for those that don’t like them, the hatred truly runs deep. I’m sure they have their reasons, but I suspect that it has something to do with conflicting ideals or some other such nonsense. Because, from a technical perspective, their cost is cheap and their customer service is fast and helpful. That’s all I can ask from a domain name registrar; I mean I’m not choosing which college to send my kids to here, I’m just registering a domain name.
Once you arrive at the GoDaddy site, you’ll be prompted to input any name you want. GoDaddy will then search to see if that name is available. Let’s use Modern Workspace as an example. My search came back immediately that ModernWorkspace.net was available but ModernWorkspace.com was taken, (also available were a bunch of other domain extensions like .info, .biz, .co and others).
The price was $12.99 per year and you choose for how long you want to keep the name for. For frugal start-ups, it’s okay to just get one year; you’ll be notified when the time approaches for you to renew or you can set it to auto-renew and bill the credit or debit card that you used. In my experience $12.99 is about normal although I’ve seen them for as low as $2.99 per year and as high as $39.99 per year. Premium domain names like “backpacks.com” or something similar that is highly desirable can go for as high as $10,000 apiece.
Here are some ideas for creating a strong domain name:
• For your ecommerce store, your company name, your website name and your domain name should all be the same.
• Go Short. This is one of the few times in life that shorter is better… Unfortunately, they’re very hard to find as most have been snatched up. Don’t expect to find a domain with fewer than six letters. Having said that, try to keep it as short as possible.
• Don’t be a trend hunter. These days, too much emphasis is being placed on putting keywords in your domain name. According to Phillip Davis, the founder of Tungsten Branding, “this is a short-term strategy based on current Google algorithms and Google has changed its algorithms numerous times already”.
• The “real” dot com question. Many people believe that if your domain doesn’t end in “.com” it is in some way second-rate. This is just plain wrong. After all, we ran out of 1-800 numbers a long time ago and no one seems to be bothered by the 866, 877 or 888.
One last thing!
If you have the cash, it is a good idea to buy up all of the domain extensions related to your name like .net, .info, .biz, .co and even the .orgs. The reason for this is that once you grow and start to become a nuisance, your competitors WILL buy up domain names with your company name, followed by an extension that’s available and use them to redirect people to their websites. The idea is that when customers search for you, they stumble across your name, everything seems legit, they click on it and go right into the hands of your competitors; who, I should add, have crafted a specifically targeted landing page that the misled customer gets sent to. And that’s when you lose the sale.
To use this in an example: If customers type in Modern Workspace into a Google search and not as a direct URL, one of my competitors may buy ModernWorkspace.info and Google will rank them right up next to me in any search results because the name matches what the customer was looking for. (This is impossible regarding ModernWorkspace.net because I’ve bought up every conceivable extension to prevent this from happening).
“But wait! Isn’t someone violating my trademark when they do this to me?”
Very astute observation… In fact, The Anti-Cybersquatting Consumer Protection Act (ACPA) provides for damages ranging from $1,000 to $100,000 if a party registers a domain in bad faith with the intent to profit from a brand’s goodwill. However, don’t forget that litigating, even when you’re in the right, is expensive.