SMPL Q&A: 3 questions on trademark naming with Jeff Lapatine

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SMPL Q&A is a blog feature in which we interview experts on all things relevant to branding, design and simplicity. In this Q&A we speak with strategy director Jeff Lapatine about what companies need to know before using a dormant, trademarked name. 

What should a company consider before using a dormant, trademarked name?

In the last 10 years, the number of trademark applications submitted annually with the United States Patent and Trademark Office has nearly doubled. In 2016 alone, a half million applications were filed.

With the rise of the tech industry, and a tremendous number of new companies being founded, developed and named—the finite amount of words and names is being depleted. For this reason, more and more companies are choosing to use dormant and trademarked names. When deciding to do so, there are a few things these brands should consider.

Under what circumstances can a company use a dormant, trademarked name?

First off, under certain circumstances, it is possible to use an already trademarked name. Trademark registrations are tied to specific trade classes. If a new application is for a different class of products or services, and isn’t likely to create consumer confusion, it may clear the hurdle. For example, if I’m seeking a name for a new medical device, I may be able to register one that’s also being used for a software application.

It’s also possible to register two identical names in the same class. The name “Evergreen” is registered by a number of different financial services and insurance companies in the same trade class, in large part because Evergreen is commonly used, leaving trademark protection somewhat diluted.

 What should a brand consider before using a name that’s dormant but already trademarked?  

Using an existing name comes with some risks, even when the prior registrant is in a different trademark class and the name is no longer actively being used. While the risks may not be legal in nature, one may face associative and reputational risks.

Consider the recent registration of the name Brighthouse Financial by MetLife for its annuities and life insurance business. While it seems like a good fit for MetLife, suggesting security and a bright financial future, Bright House Networks has been in the marketplace since 2003 serving millions with cable. Many associate the Brighthouse name with cable, which could cause confusion and reputational problems, especially because, while the image of cable companies has improved somewhat in recent years, they cable companies are still often perceived negatively. Based on a 2017 Harris Poll, both Charter and Comcast still have poor reputations. And given that annuities are often called into question as a good investment option, it seems that there is a degree of risk for MetLife to use the same name as a cable company.

Even though finding a compelling and available name is a challenge, it’s often safer to choose one without baggage or potential reputational complications.

That said, naming is a tricky and delicate art. There are many names that seem problematic at first, which then serve the brand well.

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