A trademark name image or slogan represents a business on many levels; here are some recommendations to ensure its availability.


So you want to start a business, launch a product or offer a service and you think to yourself…..what am I going to call this?

What name am I going to choose and how do I go about choosing the right one for me?!!! So many options and so little time to get the naming show on the road in order to launch your business!!!

Well believe it or not, no matter what name you choose the most important thing for you to consider is whether someone else thought of the same name or one similar to it and has or is currently using it.

A Google or similar type search should be your first step in attempting to determine whether the same name or one similar to the one you are thinking about using is mentioned in the world wide web. If there is a “hit”, you should think twice about using it right away without further research.

Although most people don’t engage an attorney in the early stages of their start-ups, it is advisable to engage an intellectual property attorney to assist in conducting research regarding availability of the potential choice. Be aware that there are limited and comprehensive search options which affect the total cost of the search.

If you will be choosing a name, and will possibly include an image, or slogan, you should consider authorizing the comprehensive search option to determine all prior commercial uses. Having conducted a search reduces the risk of a finding of infringement of another’s name or trademark.

An example of what can go wrong in failing to do research on the use of a name is the case of International Star Class Yacht Racing Association v. Tommy Hilfiger, Inc.,U.S.A., 80 F.3d 749, 753-54 (2d Cir. 1996

In this case, Tommy Hilfiger used the term STAR CLASS on garments following only a limited trademark search in the clothing category conducted by Hilfiger’s attorneys for the mark STAR CLASS.

The limited search did not pick up the registered mark of International Star Class Yacht Racing Association (ISCYRA) for its yacht club membership services. As it turns out, yacht club membership services is unrelated to clothing and the trademark registration for STAR CLASS came up with no “hits” for use in the clothing category. Hilfiger’s attorneys recommended a full search, but Hilfiger used the mark without such a search.

The U.S. Court of Appeals for the Second Circuit believed that Hilfiger should have conducted a full trademark search that included a search of sailing related goods, the source of inspiration for the infringing mark. It was Hilfiger’s choice not to perform a thorough search that lead to the Court of Appeals to remark that a party cannot avoid its duty under the trademark laws with such willful ignorance of another’s trademarks.

At stake were Hilfiger’s sales of the “infringing clothing” using the similar name and trademark of International Star Class Yacht Racing Association in the amount of $818,419.85 which damages included a request for reimbursement of attorney’s fees. The lesson to be learned – conduct a thorough trademark search, it reduces risk from a business and litigation perspective.

Next page: 4 Steps to determine availability of a trademark name or slogan 


FTC Bans Non-compete Clauses

FTC Bans Non-compete Clauses

Here are six FTC non-compete provisions In a previously article on non-competes entitled “Are Non-Compete Provisions Still Enforceable”, there was a reference to a rule published for comment in January 2023 by the U.S. Federal Trade Commission. The proposed rule would...

Seven Lessons Before Entering into a Bad Agreement

Seven Lessons Before Entering into a Bad Agreement

Look before you leap, do your home work before the commitment Jose, the President of Software Development Group (“SDG”), was desperate to expand his business. He saw many opportunities of exploiting the market for products to enhance the data security of medical...

Video Gallery

Modern version of Stoic philosopher Epictetus
A professional leads a cybersecurity training session for employees, emphasizing best practices. The photography captures the engagement of participants, showcasing the educational aspect of safeguard
Hispanic bearded male businessman trainer teaching coaching new recruitment African American female businesswoman employee in formal suit sitting studying learning company graph chart strategy
The presence of a robot using a computer. Office keyboard being typed on by machine. future IT group,.
Latino Streetwear Entrepreneur Latin Biz Today
Chef Lorena Garcia cooking with a wok
Latina Chef Loren Garcia
Latin Biz Today partner Johanna at the San Sebastián Festival


Which item currently represents the greatest hurdle in the growth of your business?(Required)

Sign Up for the Latin Biz Today Newsletter

PR Newswire

Featured Authors

avatar for Rich TozzoliRich Tozzoli

Rich Tozzoli is a Grammy nominate...

Adapt, Improvise, Overcome…or Perish

Innovation & Strategy


Four Basic Principles for Raising Capital

Four Basic Principles for Raising Capital

Outside investors want to understand a business' strategy as well as its financial statements.   The need to raise capital from outside investors requires a great deal of preparation across multiple dimensions. Among many things, investors look to understand...









Work & Life


Health & Fitness

Travel & Destinations

Personal Blogs

Pin It on Pinterest