The trademark conundrum

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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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