What’s in a name? That which we call a rose by any other name would smell as sweet, right? Not in today’s world. Poetic as Shakespeare’s words may be, they fail to consider the intrinsic value that comes with a name.

Now in fairness to Shakespeare, we’re not talking about doomed lovers here; instead, what we are referring to is the goodwill that sometimes attaches itself to a business’s name - think “Kodak” “Apple” or “Google” as examples of this. These businesses have trademarked their names as a means of building brand awareness, customer loyalty and quality perception.

So what exactly is a trademark*? Put simply, it is a term you use to identify and distinguish your goods and services from those of a competing business.

Unbeknownst to some, reserving a corporate name, obtaining a corporate charter, filing for an assumed name, or registering a domain name do not create trademark rights in that name. Although a trademark owner merely needs to use its trademark to establish some level of trademark protection (provided the trademark does not infringe another similar trademark), the protections afforded by these “common law” trademarks are severely limited in scope.

So what can a business do to protect its name and its investment in its brand? Before selecting a name, a business should conduct a pre-use trademark search to make sure another company hasn’t already registered or is using an identical or similar mark for the same categories of goods or services it offers. As attorney Mark Miller puts it, failing to conduct a pre-use trademark search is like buying a house without checking the deed records.

Take the story of A Hundred Monkeys, Inc. and 100 Monkeys Inc., currently embroiled in a lawsuit over the right to use their corporate names, as an example. In the lawsuit, A Hundred Monkeys, a California marketing corporation, has accused 100 Monkeys, a Wisconsin marketing corporation, of trademark infringement.

A Hundred Monkeys has been using its name since 1992 and was granted a trademark registration by the United States Patent and Trademark Office in 1999. 100 Monkeys, on the other hand, did not conduct a pre-use search and did not attempt to register its name, but instead, merely incorporated its name in 2006.

Although the jury is still out on this case, the lesson here is litigation, even where a party is victorious, can result in significant time and expense. A pre-use trademark search can help ensure a business does not unknowingly infringe an existing trademark.

Once a pre-use trademark search has been performed, a business should file an application to register its trademark with the USPTO and, if appropriate, register its trademark in selected foreign jurisdictions. In certain situations, a trademark may also be registered in a state to protect it within the state boundaries.

Sounds easy, right? Unfortunately, the road to salvation does not end with registration. The intellectual property arena has become even more minefield-ridden with the evolution of the Internet and the proliferation of cybersquatting. Misuse of domain names is a frequent subject of trademark disputes particularly, as tactics such as “Domain Name Tasting” – the process of registering and using a domain name for a limited time without actually having to pay for it - become more common.

While most domain names that are “tasted” are variants of generic or descriptive words or phrases that do not always implicate trademark concerns, invariably some domain names that are tasted create trademark problems. Because of this, care should be taken when disclosing information related to your domain registration plans. Also, as the number of top level domains and internationalized domain names increases, businesses should take steps to select and register a full series of domain names including their trademarks.

If you are a future or existing trademark owner, remember some key points: (1) Tell the world your trademark is yours by following it with “brand” or “TM” or ® if federally registered; (2) If you are choosing a name, pick a unique or distinctive one. As a general matter, the more unique or distinctive the name is, the greater trademark protection it receives; and finally, (3) If you are an existing trademark owner, be vigilant and alert to possible infringements.

An owner of a trademark must take reasonable business steps to pursue infringers of their trademarks or risk waiving or abandoning their claims.

This article is not intended as an exhaustive discussion of the points raised herein, nor is it intended as a substitute for legal advice or opinion which can be rendered only when related to specific fact situations. The author wishes to thank William B. Nash, an Intellectual Property Partner in the San Antonio office of Jackson Walker L.L.P., for his contributions to this article.