The Montana iP Trademark Blog

Many people are aware of the importance of legally clearing a name for use and taking steps to establish legal ownership of that name. But it is also disappointingly common, particularly amongst those who are less familiar with the naming process (and occasionally amongst those who should know better) that the legal process is introduced far too late into the process. A company may have invested time, money and resources into researching names, and fallen in love with a particular name which ticks all the boxes from a branding perspective, only to find that the name is owned by someone else. Or that it is unregistrable as a trademark and potentially difficult or costly to enforce.

So when should a trademark attorney get involved? Obviously, as a trademark attorney myself, I would say as early as possible. However, to those who are suspicious of involving an attorney in what is perceived as a “creative” process, this might be seen as self-serving. Indeed, some seem to believe that attorneys actually stifle the creative process: “Once an attorney has sifted through your list of names, all you’ll be left with are the dull, boring, lifeless names that just don’t fit our branding model….” Etc etc. In certain circumstances, such a scenario may be unavoidable - all the “good” names are already taken. But with the right approach, an understanding of the brand strategy by all participants, and close collaboration between the branding and legal elements, you can use your trademark attorney to enhance, rather than stifle, the naming process and help you achieve your branding goals.

At the initial, strategic stage of the naming process, attorneys can help brief the branding team of the potential legal pitfalls. In so doing, the naming team will have a sufficient understanding of the relevant aspects of trademark law so that they understand the relative legal and commercial benefits and downsides associated with certain types or categories of names. To do this properly, the trademark attorney does need to fully understand the client’s strategy for the new name so that he or she can anticipate legal issues from the off, and tailor the advice specifically for the brief. For example, your attorney needs to properly understand the life-cycle and proposed uses of the product or service which is to be named and the budget available for the brand roll-out so that any legal input can be appropriately balanced between advising on a client’s “freedom to operate” under a name, and the ability to enforce the rights and protect against misuse by competitors and infringers down the line.

Of course, I would certainly not suggest that such legal knowledge or information is used as a "filter" in a free-form brainstorming workshop. But it would definitely be applicable where a more formalised approach is taken or when sorting and sifting the names that have been generated as part of a brainstorming exercise. In either case, a structured approach to the evaluation of names generated during the creative process will ensure that any shortlist of names fits with the brief and the strategic objectives for the brand. Including appropriate legal criteria as part of this evaluative process and allocating the right weighting to such criteria will also help avoid disappointment later on in the process - a good trademark attorney should be able to assist you with generating these criteria.

In part 2, we will take a look at the specific elements which make up a good trademark, as well as the key trademark-related issues which are (or should be) an essential part of any brand naming exercise.