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CHOOSING, BRANDING AND
PROTECTING YOUR VENTURE
PRESENTED BY:
TAYLOR NORTON | BHBM LAW
SCOTT STERNBERG | BHBM LAW
TOM MARTIN | CONVERSE DIGITAL
WHAT’S IN A NAME?
www.bhbmlaw.com
TRADEMARK
Distinctive vs. Generic
1. The Descriptive Paradox - Company or Brand Names:
a) Should be clever but not vague
b) Should be clear but not simply descriptive.
www.bhbmlaw.com
CONFUSED?
www.bhbmlaw.com
DISTINCTIVE VS. GENERIC
Distinctive vs. Generic
1. Can’t register a trademark that is either a generic term or a
descriptive term (e.g., Norton’s Car Repair Shop)
2. Many new companies - in coming up with the best name -
want to say what the company does or what it’s about, but
you're limited, because strong trademarks at their core are
unique, arbitrary and fanciful
www.bhbmlaw.com
GOAL
Think of something that is both “unique” and “non-descriptive”
Then, commit to building a brand around, and promoting, the
association between the selected mark and the business or
product.
www.bhbmlaw.com
DO YOUR DUE DILIGENCE
 Is the name or mark or logo you selected already out there?
 It is prudent to do the research.
www.bhbmlaw.com
ANALYZING THE RESULTS
 Do you know how to tell whether a similar trademark is a
threat?
 How does your selected mark stand with competition?
www.bhbmlaw.com
USE IN COMMERCE
 In order to obtain a U.S. trademark registration, you need to
use the mark in commerce.
 However, you can still file a U.S. trademark application on
an intent-to-use basis.
www.bhbmlaw.com
INTERNATIONAL REACH AND PROTECTION
 “Trademark Squatting”
 “3rd Party Blocking”
 6-Month Window for Priority
www.bhbmlaw.com
BUILDING BRAND AND BUZZ
 Use your selected mark everywhere that you can.
www.bhbmlaw.com
USE THE CORRECT SYMBOLS
 The TM Symbol
 The Circled “R” Symbol – ®
www.bhbmlaw.com
THE PROCESS OF BRANDING
www.bhbmlaw.com
BRAND DEVELOPMENT
Why you shouldn’t break the bank on initial brand development:
1) Product vs. Service
2) Your Brand is a Vessel
3) Minimum Viable Brand
4) Marketing ROI of Branding…
in a world of digital search
www.bhbmlaw.com
YOU GET WHAT YOU PAY FOR
Why cheap isn’t always in your best interest either…
www.bhbmlaw.com
WHAT DO YOU DO?
The lawyers say you need to change.
What do you do?
www.bhbmlaw.com
CONCLUSION
Do you want a distinctive name when generic might work?
www.bhbmlaw.com
QUESTIONS? CONTACT US!
Taylor Norton | BHBM Law
tnorton@bhbmlaw.com
(504) 585-7872
Scott Sternberg | BHBM Law
ssternberg@bhbmlaw.com
(504) 585-7857
Tom Martin | Converse Digital
tom@conversedigital.com
(504) 383-4410
www.bhbmlaw.com

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What's in a Name: Choosing, Branding and Protecting Your Venture

  • 1. CHOOSING, BRANDING AND PROTECTING YOUR VENTURE PRESENTED BY: TAYLOR NORTON | BHBM LAW SCOTT STERNBERG | BHBM LAW TOM MARTIN | CONVERSE DIGITAL WHAT’S IN A NAME? www.bhbmlaw.com
  • 2. TRADEMARK Distinctive vs. Generic 1. The Descriptive Paradox - Company or Brand Names: a) Should be clever but not vague b) Should be clear but not simply descriptive. www.bhbmlaw.com
  • 4. DISTINCTIVE VS. GENERIC Distinctive vs. Generic 1. Can’t register a trademark that is either a generic term or a descriptive term (e.g., Norton’s Car Repair Shop) 2. Many new companies - in coming up with the best name - want to say what the company does or what it’s about, but you're limited, because strong trademarks at their core are unique, arbitrary and fanciful www.bhbmlaw.com
  • 5. GOAL Think of something that is both “unique” and “non-descriptive” Then, commit to building a brand around, and promoting, the association between the selected mark and the business or product. www.bhbmlaw.com
  • 6. DO YOUR DUE DILIGENCE  Is the name or mark or logo you selected already out there?  It is prudent to do the research. www.bhbmlaw.com
  • 7. ANALYZING THE RESULTS  Do you know how to tell whether a similar trademark is a threat?  How does your selected mark stand with competition? www.bhbmlaw.com
  • 8. USE IN COMMERCE  In order to obtain a U.S. trademark registration, you need to use the mark in commerce.  However, you can still file a U.S. trademark application on an intent-to-use basis. www.bhbmlaw.com
  • 9. INTERNATIONAL REACH AND PROTECTION  “Trademark Squatting”  “3rd Party Blocking”  6-Month Window for Priority www.bhbmlaw.com
  • 10. BUILDING BRAND AND BUZZ  Use your selected mark everywhere that you can. www.bhbmlaw.com
  • 11. USE THE CORRECT SYMBOLS  The TM Symbol  The Circled “R” Symbol – ® www.bhbmlaw.com
  • 12. THE PROCESS OF BRANDING www.bhbmlaw.com
  • 13. BRAND DEVELOPMENT Why you shouldn’t break the bank on initial brand development: 1) Product vs. Service 2) Your Brand is a Vessel 3) Minimum Viable Brand 4) Marketing ROI of Branding… in a world of digital search www.bhbmlaw.com
  • 14. YOU GET WHAT YOU PAY FOR Why cheap isn’t always in your best interest either… www.bhbmlaw.com
  • 15. WHAT DO YOU DO? The lawyers say you need to change. What do you do? www.bhbmlaw.com
  • 16. CONCLUSION Do you want a distinctive name when generic might work? www.bhbmlaw.com
  • 17. QUESTIONS? CONTACT US! Taylor Norton | BHBM Law tnorton@bhbmlaw.com (504) 585-7872 Scott Sternberg | BHBM Law ssternberg@bhbmlaw.com (504) 585-7857 Tom Martin | Converse Digital tom@conversedigital.com (504) 383-4410 www.bhbmlaw.com