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May 24th, 2010 by Jeff Lapatine

The trademark conundrum

Anyone who has been tasked with developing a new name for a company or product knows that the 800-pound gorilla in the room is the challenge of trademark availability.

It’s one thing to try to come up with the perfect name. It’s quite another to find a perfect name that no one else has trademark protection for.

What makes this even more interesting is that trademark law is rife with uncertainties. Trademark lawyers must regularly make judgment calls on name availability. Part of their job is to search and register trademarks. The other part is to help their clients assess the litigation and registration risk of using a new name.

Let me explain some of the questions branding professionals must consider in creating new names.

1. Is someone else using the same name? This isn’t as simple as it seems. First of all, trademarks are registered in a wide variety of classes, which include everything from pharmaceuticals, to machinery, to communications services and others. Most of the time, we need only worry about trademarks in the same class or classes that the client is doing business in. So, Infiniti Solutions, a company that makes circuit boards, needn’t worry about the trademark for Infiniti, the car brand. But even in the same class, the same name may be registered by different applicants. This becomes a question of “degree of possible confusion.” Theoretically, the company, Infinity Electronics, can co-exist in the same class as Infinity Systems, the audio speaker company. In fact, it does. Sometimes, trademarks can be filed for limited use. For example, registering the trademark for an audio speaker instead of a manufacturing system may reduce the possibility of confusion. Needless to say, this uncertainty regarding infringement makes it very hard to determine which new name candidates to present to clients.

2. What about a different spelling? Again, there’s a lot of uncertainty here. A good rule of thumb is that if names sound the same, confusion and trademark problems can arise. However, names with different spellings often live in the same trademark class. For example, both the names Veriti and Verity are registered as trademarks in the same class covering electrical and scientific equipment. Possibly, these companies came to some agreement (they’re allowed to do this) or possibly the United States Patent and Trademark Office (USPTO) didn’t see a problem with registering both names. But the issue of modified spellings continues to be a headache when creating and proposing new names.

3. Should a company just use the name it likes and not worry about lawsuits? Some argue that a big company needn’t worry about a small company or individual suing at all based on big fish/small fish thinking. While there may be some wisdom to this thinking, unforeseen consequences can result as smaller companies or individuals may see an opportunity for a big pay day. These days I find that trademark attorneys representing larger companies tend to be pretty conservative. There is also the possibility that the USPTO will reject the name after they’ve reviewed the case. Organizations or individuals that ignore trademark rules and simply choose to move forward with new names and brand launches can find themselves between a rock and a hard place.

4. What if I don’t find any registered trademarks? Even here, the situation is murky. The fact is you don’t have to formally register a name to have trademark protection. Establishing that you use the name in the marketplace may be sufficient to prevent new applicants from filing for the same name. So when recommending names, we need to Google as well. And we need to use our judgment as to whether a website we find represents a true trademark risk or not before presenting a name.

These are just some of the considerations that make navigating trademark law so tricky. I like to say that naming is 1/3 creativity, 1/3 professional talent, and 1/3 luck. In a typical assignment, we can expect at least 50% of the names we think of to fail trademark review (naturally, we don’t present these). However, these are often the juiciest candidates.

Jeff Lapatine is a group director: naming and brand architecture for the Siegel+Gale New York office.

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Mar 2nd, 2010 by Jeff Lapatine

Car Model Names: Keepers or Clunkers?

It’s time for another installment of the S+G Moniker Monitor.

This time, I thought it would be interesting to find out what drivers like or dislike about new car model names.

To find out, we conducted an online survey with 400 statistically significant potential purchasers. We picked six car model names without mentioning the manufacturers.

They are:

• Cruze
• Forte
• Leaf
• Panamera
• Rapide
• ZDX

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Dec 3rd, 2009 by Jeff Lapatine

The Siegel+Gale Moniker Monitor: Smartphones

There are many factors that affect how consumers make decisions about product brands. As practitioners in the brand strategy and naming field for over 40 years, we understand the nuances of what drives brand choice. One thing that’s highly important is the right product name .

We thought it would be an interesting exercise to, from time to time, visit the marketplace and ask consumers directly what they like or don’t like about certain product names.

Introducing the Siegel+Gale Moniker Monitor™.

Each month or so, we’ll select a different product category, do some market research (online survey with about 400 statistically significant potential purchasers), and find out what people think about the names of some newly launched products. This month, we’ve picked cell phone/smart phone names.

What do people think about today’s cell/smart phone names?

These days, so many models are being introduced that it’s hard to keep them all straight. We wanted to know to what degree their names have an impact on what phones consumers buy.

We picked seven cell phone/smart phone names to test (without mentioning the manufacturers):

Comeback
Glance
LX-290
Ozone
Smooth
Surge
Tritan


We asked the following five questions:

Is it a good name for a cell phone/smart phone?
Does it sound cool?
Is it intriguing and does it make you want to find out more?
Does it suggest an innovative product?
Is it a unique name?

And here’s what we found out:

1. The more powerful sounding names scored best. Tritan and Surge consistently did better in response to all of the questions. That is, these names were the most appropriate, cool, intriguing, innovative, and unique. They’re also the names that people said they most preferred.

Why did they do so well? These names not only sound strong, but they capture the promise of power, speed, reach and connectivity—qualities essential to wireless service.

Most Preferred Names

2. Comeback performed by far the weakest against the questions. It’s also the name people least preferred.

Why would Comeback do so poorly? In naming, you need to be careful about unintended negative connotations. People might associate the name with previous performance problems or the fear that they may have to return the phone for repairs.

3. Interestingly, the alphanumeric entry LX-290 did OK. While people didn’t think it was a unique name, it did just about as well as Glance, Ozone, and Smooth on appropriateness and innovation. The letters LX, borrowed from car model naming, implies superior quality and luxury. We’ve seen this well-established naming convention do very well for computers and sporting equipment as well. It would make sense that it would resonate with phone buyers.

4. How important is the company name in driving the purchase decision? Apparently, very. Only 17% of the subjects found the model name more important, while 49% found the company name to be more important. In fact, 19% of those didn’t know the model name of the phone they currently had.

5. At the end of the survey, we asked the subjects to tell us which of the names they remembered. Here the results were a little different. Tritan and Smooth were the most memorable. Least memorable were Surge and Glance. So while Surge was a preferred name, it was hard to remember. Go figure.

So, what can we take from this study? It seems that power and innovation prevail as key attributes. And alphanumeric models, though not exciting, do better than names with vague or confusing brand benefits.

In the end, Tritan seems to be the kind of moniker that’s a good fit and one that consumers remember.

What do you think? Leave a comment or email me (jlapatine@siegelgale.com) with your thoughts.

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Jul 23rd, 2008 by Jeff Lapatine

The Power of Power Company Names

Leaving my house this morning, I spotted a truck pulling out from the local power company facility. The truck read National Grid.

I thought, wow, National Grid is a powerful name. It sounds like this is the company that controls the national power grid…the company that pulls the switch and turns the lights on for the whole nation. Of course it doesn’t, but the name sort of captures this image.

So how do you come by a name like this?

Essentially, there are four kinds of names for trademark purposes–generic, descriptive, suggestive, and fanciful.

THERE IS A BREED OF STRONG NAMES THAT IS SOMEWHAT DESCRIPTIVE AND SUGGESTIVE AT THE SAME TIME, AND SEEMS TO CAPTURE THE BEST OF BOTH.

A generic name would be Energy Company. Many companies in the field use this term to define themselves (we’re an energy company). Sometimes, this is known as the industry-standard name.

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Feb 16th, 2007 by Jeff Lapatine

Should I Blink or Not?

You may have heard about a new smart credit product known in the financial industry as “the contactless credit card.” It enables consumers to make purchases without having to swipe their credit cards, making it faster and easier to transact.

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