The Montana iP Trademark Blog

The thing is with brand naming is that whether you have taken six months, six weeks or just six hours to come up with a list of possible names for your new product or service, the amount of time invested in the exercise does not always directly correlate with the quality or strengths of the output. For sure, with the right planning and a well thought-out and implemented brand strategy, you are more likely than not to find a name which is the right fit for your business objectives. But there is no guarantee your name will “work”. Nor that it will avoid ridicule from the media or the public once it has been launched, as several brands have witnessed before. And that first name, on the first flip chart, in the first naming group session, may well turn out to be the name which finally launches your brand into the stratosphere.

But maybe that’s the attraction. It’s the unpredictability that makes the whole process interesting and enjoyable. Contrast this with the somewhat dryer and more prescriptive process of legally approving and cutting down that precious list of names and you can understand why the trademark attorney’s role is greeted with far less enthusiasm, and occasional scepticism.

But remember: trademark attorneys have read the trademark textbooks and case files so that you don’t have to. What you do need to know are the “what fors” and “whys” of an attorney’s role so that you’re in a better position to ask the demanding questions. And so that you can ensure your attorney is doing his or her job right and can add value to your naming process. Hopefully some of what follows might assist you in achieving this.

From a trademark attorney’s perspective, whilst there are several issues to consider when advising on the selection of a brand name, there are two overriding elements which must be taken into account: Distinctiveness and Availability for Use. Let’s look at each of them in turn.

For a name to function as a trademark it has to be capable of uniquely identifying your goods or services and distinguishing them from those of your competitors. It has to be distinctive rather than merely descriptive.

For a brand name, this usually means one of two things. It can either be a made-up name (like KODAK) which carries no meaning to the consumer other than when used in the context of your goods and services. Or the brand name can be an existing word, but where the ordinary meaning or contextual use of the word bears no relationship to your goods or services (like APPLE for computers). There is also a third category of trademark, that may be bordering on the purely descriptive but which has acquired its distinctiveness through extensive use, so that consumers have come to identify that word with the products or services in question. However, this category of trademark does not of course arise in the case of entirely new brand names.

This is a fundamental issue. Has your new name already been used or registered by another party for the same or similar goods or services as yours? If so, your use of the same mark is most likely to be infringing that other party’s legal rights which could end you up in court and having to pay damages. At best, you are very likely to have to entirely re-brand your product and service, with all the costs, potential loss of business and dents in your reputation that may ensue.

A trademark attorney will conduct searches of the relevant trademark registers to find out whether your new trademark is available for use. Also, in the case of common law countries such as the US and UK where unregistered rights to trademarks can arise through use, additional searches will be conducted to establish whether there has been any use of the trademark. All such searches will not only look at identical marks but will also review any similar marks - using a trademark which is confusingly similar to an existing trademark could also be infringing that earlier brand owner’s rights.

Given this background, what should you be expecting your trademark attorney to be doing to assist with the naming process? This will be examined in more detail in Part 3.