What truly is in a name?
PR professionals play a powerful role in promoting and cultivating brands for clients, as well as for their own organizations. Assisting with the selection of a brand name for a new product or service is an important aspect of that role. The team must choose a name that balances the right message and image to attract target consumers, while simultaneously informing those consumers of the benefits.
Many PR pros forget that there is more to selecting a brand name than the words you choose, the graphics you use and how the brand makes the consumer feel. There are multiple legal considerations that also need be addressed, or they could haunt your company or client later.
It can be easy to overlook that brands are valuable assets and protected property under trademark law. While registration of a trademark provides additional advantages, trademark rights are established through use. Trademarks are the public face of a product and hold the reputation of the organization. Thus, it is important to select the strongest trademarks to lay a strong foundation for a long-term asset.
Here are five considerations, beyond the practical marketing concerns, that PR pros should contemplate when helping their company or a client select a strong brand name.
1. What names are other brands using?
While conducting a search for a potential trademark is not mandatory before selecting and adopting one, it has many benefits. There are different types of searches, from those that only parse federally registered or applied-for trademarks, to more comprehensive searches that also include a search of trademarks registered in each state, trademarks in use but not otherwise registered, and uses of the potential trademark and variations thereof in domain names.
Even a basic search of federally registered or applied-for trademarks will reveal similar marks for similar goods or services. Knowing what similar brands are already in the marketplace can help you steer away from a trademark that could embroil an organization in costly infringement litigation.
2. Is it descriptive?
The easiest-to-protect options for new trademarks are made-up words (such as "Xerox" or "Häagen-Dazs
") or common words used in an uncommon manner (such as "Apple" for computers). Marks that describe a characteristic, function, quality, or purpose of a product or service should be avoided, because they are not entitled to trademark protection without evidence that consumers understand the mark is a brand name rather than a descriptor. This is otherwise known as “secondary meaning” or “acquired distinctiveness.”
For instance, selecting the term "Delicious" for the name of a food product would require proof of secondary meaning/acquired distinctiveness because it describes a quality of the food item. If a company were able to use this descriptive term to the exclusion of all others in connection with its food item, competitors would be barred unfairly from using a term commonly used and understood by the public to describe a particular quality of food. Similarly, geographic locations and surnames need to acquire distinctiveness before being protected to the fullest extent.
3. Is it weak?
A key purpose of a trademark is to be a short-hand reference for consumers to identify a particular product or service by a particular provider in the market. They're also intended to maintain consumer feelings associated with the product or service. When there are many uses of a term in the market for similar goods and services, it becomes difficult for that term to distinguish each company’s goods or services from one another. This is referred to as a "weak mark."
When selecting a new trademark, it's important to avoid weak terms that competitors use. For example, search the Internet for the name “Ray’s Pizza” and you will find at least five pizzerias in New York City with some variation of “Ray’s.” Even if the term “Ray’s” perfectly expresses the desired feel for your client’s new pizzeria in New York City, using it will make it difficult for the new pizzeria to stand out among its competitors. Conducting a trademark search prior to adopting a new mark can reveal whether a term is weak.
4. Are the words generic?
It's important to use your trademark properly to maintain your rights. Marks should be used as an adjective to describe goods or services, not as a noun. For instance, instead of saying “check out our latest model of Escalator,” say “check out our latest model of Escalator brand moving stairs.”
When a trademark is used as a noun it may result in consumers calling all such products or service by your brand. That can reduce your trademark's significance, and perhaps even cause you to forfeit your rights. One of many examples of a trademark losing its trademark significance is the term "escalator." It was once a brand name of moving stairs. Now it is an alternative or generic name for moving stairs.
5. What advice can an attorney offer?
Speaking with an attorney can help you avoid pitfalls and save money. However, don’t just hire any attorney. Even great business attorneys don't always know the many nuances of trademark law. It is important to select an attorney experienced in trademark law who regularly practices in the field, as they are in the best position to advise you about all aspects of the new trademark.
Tanya Marie Curcio is an associate in the Vorys, Sater, Seymour and Pease LLP Washington D.C. office. She has extensive experience with trademark and copyright based agreements and disputes for clients across multiple industries, and can be reached at firstname.lastname@example.org.