How Web 2.0 Changes the Rules of Brand Protection and Brand Promotion Chapter 1 – Brands: Trade Marks, and Domain Names
December 1, 2009
What is a brand?
‘Brand” is a much bandied about term nowadays, originating from the days when animals were burned with a branding iron to indicate ownership of them.
In another chapter to this book I will be looking at the concept of branding in detail, but for now suffice to say that a brand is what distinguishes one product or service from another.
The law protects certain elements of brands, such as names, and logos, through intellectual property rights. In this chapter I am focusing on registered trade marks and domain names.
Brand element – NAME
One major advantage a business has over individuals is in getting to choose its own name. However, the subject of names is surprisingly complex, and not well understood, with the result that many businesses do not give the choice sufficient time, money and consideration. Often this causes difficulties later on, or rebranding is necessary to either adjust the name or change it altogether.
Some of the complexity arises because there are various places where people may register names. So it is possible to register domain names, company names, or to simply adopt a trading name. Trade marks are more remote to many small businesses, possibly because the higher official fees payable to register, make them more marginal than domain and company names in terms of the numbers of people registering.
I will first look at trade marks and later go on to consider other registrations of names and how they interact with trade marks.
The type of name matters
There are broadly 3 types of name:
- Proper
- Generic
- Descriptive
Dell is an example of a proper name. A generic name is one that means something in the local language, so for example, Shell, or Apple are generic brand names in English speaking countries. Finally a descriptive name is one that conveys a meaning about the product or service it is attached to. So for example, World Wide Fund was descriptive of the activity, which is why its acronym WWF was adopted for trade marking purposes. The same happened for Business Networking International, now BNI as a trade mark.
From this it follows that it is not possible to trade mark descriptive names, the reason being that the aim of trade mark law is to protect consumers and prevent them being confused as to the source or origin of goods and services. So a trade mark will prevent competitors using similar names, not just exactly the same name.
To stop others using descriptive names would bring commercial life to a rapid halt, because it would mean whoever first started a business involving, for example, international networking, could monopolise the name Business Networking International, and stop any other networking business from describing themselves as providing business networking internationally. The world would only have room for a limited number of businesses providing a given activity, and competitors would not be able to enter a market.
This is why it is not possible to have exclusive rights over terms that describe your business activities. Trade marks are only available for distinctive names rather than descriptive ones.
Function of a trade mark
Once you have a name that is capable of registration as a trade mark, the name acts as a ‘container” in which the brand value generated in the business or product is captured. Although it is possible to have trade mark rights without registering a trade mark, (and there are differences as to the availability and cost of enforcement measures between registered and unregistered rights), I here focus on registered trade marks.
As a trade mark ring fences an area of business in which you have exclusive rights to use your brand name and which competitors can be stopped from free riding, it is worth thinking about the role that the nature of the name itself bears on your position in protecting it.
Proper names are easier to protect
The ease with which you will be able to stop others using similar names to yours depends on the type of name you have chosen. If your brand name is very distinctive, which a proper name like Ryan Air is, then it is going to be easier for you to protect your brand than if your name is generic, like Easy Jet.
The generic word ‘Easy” is more difficult to protect than the proper name ‘Ryan”. So Ryan Air will have an easier time in stopping others calling themselves Ryan ——- (anything) than Easy Jet will have in stopping others calling themselves Easy —— (anything). For one thing there are fewer people who are likely to want to use “Ryan” than “Easy”.
But search engines reward descriptive names
The way search engines work, (all else being equal) is that when somebody searches for something by description, then the search engine takes into account a site’s domain address (URL) in determining which sites are most relevant to the searcher. So, if a site uses the same descriptive term in its address, as the searcher searched for, that site is more likely to rise to the top of google than a site whose address bears no relation to the descriptive term that is keyed in. Therefore, if I search for ‘books” a site with the domain name books.com is more likely to be among the top google links, than ‘Borders”. So, generic domain names like books.com, or toys.com are very valuable in getting traffic for the website to which they devolve.
Anecdotal evidence indicates that some 25% of searchers will key in a URL into the browser when searching for something. So, these people might type in books.com, when looking for books. That is why owning some descriptive domain addresses in addition to the normal address, is going to drive traffic to your site. So, Barnes & Noble”s uses books.com to drive additional traffic to its site, over and above those who are aware of the brand itself.
However, while books.com is excellent as a domain name to generate traffic and links with the appropriate target term ‘books”, it is completely valueless as a business or trading name. Using such a name as your business name is as primitive and unimaginative as calling your dog DOG would be.
People have in the past assumed that using descriptive names on the web was the way to go, presumably because search engines reward descriptive names. However, trading on the internet under a descriptive name has serious limitations as Hotels.com found out recently when it failed to secure a trade mark from the US Patent and Trademark Office over its name.
It may be that these businesses starting back in the early days of the web, were pleased to be the only supplier in their category. In those days when the web was like a small town there was just one butcher, or one baker or one supermarket or one hotel, so it may well have been pleasing to be the only book provider, or hotel say. However, as the web has grown and millions of sites have sprouted up, descriptive names as brand names have become the sure way to ensure oblivion for the brand.
Distinctive brand names
Anyone starting up a business would be well advised to find as distinctive a name as possible, and to check on search engines to ensure the chosen name really does stand out from the crowd of similar names.
There are other ways of taking advantage of descriptive domain addresses that do not involve giving your business a descriptive name.
For example, it is possible to use a distinctive brand name with a descriptive domain address. If you enter books.com in your browser, the address changes to Barnes & Noble. The opposite approach is equally valid, of using books.com as the main address while anyone keying in Barnes & Noble would arrive at books.com. You do need to choose the destination URL carefully because you may only have one, and that is the one that builds up a Google history, and will come when you do a Google search. With books.com the word comes up anyway on the first page of Google, but with other less well known descriptive domain addresses, they would not necessarily appear in a Google search result if the domain was not your principal address.
So to use Azrights as an example, we use the descriptive address azrights.com. This means we tend to appear quite high up in the natural search engine results when searching for terms like ‘brand solicitors” despite the fact that we are not optimising our website for such terms. Fortunately, as we have a distinctive name, we also come up anyway for Azrights when you do a google search for Azrights. However, if we had a less distinctive name, then our choice of azrights.com as a domain address means we may not have appeared for our own name, unless we took specific steps to optimise the website to appear for Azrights. If, on the other hand, we were using the address azrights.co.uk then we would very likely appear for our own name even if it were not a distinctive one.
Is there a ‘right” way to do it?
Some branding experts favour using the same domain name as the brand name. Others find it acceptable to use a brand name combined with a descriptive URL that will bring traffic to the website – especially, if the brand name is owned as a domain name that can be used as the official website and email address on business cards. (In this scenario, it is only the observant few who will notice that once they enter the website address into the browser, it changes to something else (the descriptive URL)).
At the end of the day, there is no right or wrong about it, and the choice is yours. What is important is to start out in business understanding the name choices you make, so that you will be able to avoid changing your principal URL if you can help it.
In our case, we had been using azrightlaw.com for a while, and then changed to azrights.com without any clear reason for doing so, except that we received no advice on the point. In making the change, we lost a few years of history, including links built up in the search engines!
Unique names are more important than ever.
In the Web 2.0 environment it becomes even more important for a business to have a distinctive brand name. Otherwise you will fail to stand out, and will get lost in the increasingly overcrowded web. Your efforts to engage and promote your business will be thwarted if people are unable to easily find you online.
So, clarity about objectives when choosing a domain address, and a brand name is key. Looking ahead, you will want to be able to register your name as a trade mark. A trade mark is the closest you get to having exclusive rights to use the name for your goods and services. If the name of your business is not capable of being protected through a trade mark registration then it will be much more difficult to protect your business name and build up goodwill under that name.
Trade marks give wide protection against confusingly similar names which is why it makes sense to ensure you have a name you can own, that is not descriptive, and that nobody else already owns.
For example, search engines will reward Islington IP lawyer with a prominent position if my domain name is www.islingtoniplawyer.com and a searcher searches for ‘Islington ip lawyer”, (whereas a name like Azrights will only appear for Islington IP lawyer if I have taken other steps to try to appear when searchers use those keywords). For me to trade under a descriptive name like Islington IP lawyer is, in trade mark terms, like choosing a bucket full of holes. Such a descriptive name has little potential for capturing brand value and if I enjoy success trading as Islington ip lawyer, there is nothing to stop a competitor setting up as www.islington-ip-lawyer.com and sharing in my success.
Therefore, use of descriptive domains should be carefully considered, and used appropriately, such as on a microsite, or as a way to drive traffic to your brand name website.
Descriptive names
If you want to use a descriptive name that search engines reward should you use that name as your brand? I have already answered this question above.
It is worth reiterating it in case there is any uncertainty – although search engines reward descriptive names, it is a bad idea to use a descriptive name for your business. If you want to have the benefit of a descriptive domain name, then combine it with a distinctive brand name. This is a viable option if you want the search engine benefits that a descriptive domain name carries.
Approach to choosing names online
One important point is to be clear why you may want to use a descriptive domain name. Many people have no clear idea why they choose descriptive names apart from the fact that they think this is the way to go.
It makes far more sense if you are going to use a descriptive domain name, to make sure it is a good one, in terms of its ability to bring traffic to your site. So, as part of your search engine optimisation strategy, do your homework by clarifying what your unique brand positioning is going to be. Then do some keyword research using Google keyword research tool, so that your chosen descriptive domain name, is one which has a substantial number of searchers looking for it.
Conclusion – The importance of a good name
Everyone setting up a new business faces the question: what to name the business. It matters what name you choose. It is critically important to choose a name that is available for you to use and one that you can own. Good brand names are distinctive names – online ones that stand out are Amazon, Bebo, Ebay, Dell.
While some people are lucky and choose a name which they can own, it is not a good idea to assume your chosen name is available, even if it’s the most weird and wonderful made up name imaginable. The trade mark registers are so full, that they are a constant source of surprise. Also the scope of trade mark protection is wide, so that there may be a similar existing registration which you should be aware of before you make your final choice.
Many start ups tend to choose descriptive names that provide a marketing shortcut but as we have seen are not good names in terms of the potential to capture the brand value. Later, as these businesses become more established they may regret their descriptive name.
However, choosing a descriptive name is a good approach if you want to save on trade mark costs initially when the business is not yet established and viable. If yours is a descriptive name, then you avoid the need to check the trade mark registers. Later on if your business succeeds, it will be important to rebrand, and adopt a distinctive brand name. As long as you avoid changing the domain name, this strategy could work. (Choose your domain carefully, so you do not have to change it later and lose all your history with Google and other search engines). However, any social media exposure you get will be lost among the sea of similarly descriptive terminology online.
