Imagine that you are a small company that wants a name that is easy to clear and use. Something that you can be identified with. It feels natural to select the name of the founder as the name of the company or the company’s main product. And in many cases, it’s a good choice.
But not always.
In a recent decision, the Trademark Trial and Appeal Board held that “McSweet” when used in connection with “pickled gourmet vegetables” is confusingly similar to the McDonald’s family of “Mc” trademarks for food products. This is not the first time issues have arisen over the use of one’s own name as a trademark. The Gallo Brothers had nasty fight in the courts over the right to use the “Gallo” name for cheese.
Trademark infringement is often misunderstood. Identical names may be infringing — or not. Similar names may be infringing — or not. Trademarks can exist without being registered.
Trademark infringement exists when a consumer is likely to be confused by the source of the goods or services. This means that identical marks used for different products are not necessarily infringing. For example, “Suncrest” for apple juice and “Suncrest” for office furniture are not likely to be infringing of one another. The consumer isn’t likely to believe that the manufacturer of apple juice has any association with the manufacture of office furniture.
So what to do?
Choice one is to name your company or your product anything you want and take the risk that someone else has better rights to the name. This choice may work while you are getting your product right, or until you really settle on a name. This choice means that you may have to change your name at some point. Choice two is to properly search, clear and document ownership in your name before investing in signage, websites, brochures, advertising and marketing. Choice two requires some investment in the brand.