Choosing a Name that “Wows”

Take on the Las Vegas NHL Name Challenge

Bill Foley, the owner of the new National Hockey League (NHL) expansion team in Las Vegas, recently issued a challenge to fans and interested parties to suggest a name for our NHL team – a name that “wows,” represents and is unique to Las Vegas, and causes people to say: ‘“These guys are tough. These guys are going to win. These guys are dedicated.”’ Oh, and one more important condition – the name must “not already trademarked” and can be obtained without paying someone who has already secured the rights. (See “Bill Foley’s frustration grows over lack of name for Las Vegas NHL team,” Steve Carp, Las Vegas Review-Journal, July 15, 2016.)
I understand Mr. Foley’s concern and frustration. Having worked with a substantial number of clients on trademark and other intellectual property matters, one of the most difficult decisions that any business owner makes is identifying a brand that can be both defended and enforced. Often, like in the case of our city’s expansion team, the first choice (and sometimes the second choice or third choice) is simply not available. The choice: (a) may already be used by someone else on the same or similar goods or services, making it difficult to defend, or (b) may be too descriptive, making it difficult to enforce.
It is important to know that in the United States, first use of a trademark controls and the first use owner has priority rights over those who use the same or a confusingly similar trademark thereafter. In some instances, the priority rights holder may not register the rights with applicable state or federal government agencies, making it more difficult to fully “clear” proposed new trademarks.
For those interested in accepting Mr. Foley’s challenge or for anyone else going through a similar process, may I offer the following suggestions:
1. Have a brainstorming session where every potential word, combination, or other variation is identified.
2. Put all of the letters/numbers of the top 2 or 3 choices in a hat, mix them up, and assemble them into 2 or 3 made-up/coined versions that convey the impression of the desired brand. Note: these made-up versions tend to be the easiest to defend and enforce because there are often no existing instances in the marketplace, making it easier to obtain related intellectual property, such as domain names and social media handles.
3. Perform a trademark search on the top choices, starting with the free databases available at the United States Patent and Trademark Office (“USPTO”) (www.uspto.gov), Nevada Secretary of State (www.nvsos.gov), and Clark County Fictitious Firm Name (http://www.clarkcountynv.gov/clerk/services/Pages/FFNSearch.aspx) websites. Note: While no search will capture all third party rights, this step can avoid the most glaring potential problems and narrow the decision to more viable options.
4. After reviewing the results and assessing the corresponding risks, select the best available option and proceed to bolster the rights, including obtaining a federal registration with the USPTO.
Bryce Earl is a native Nevadan who strives to strengthen the long-term vitality of the business community. He is a shareholder with Holley, Driggs, Walch, Fine, Wray, Puzey & Thompson, a prominent law firm with offices in Las Vegas and Reno. By combining his background in information systems and the law, he helps clients implement a customized intellectual property plan to enhance and protect their businesses.

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