Don’t Choose Names Without Involving a Trademark Lawyer Who “gets” Branding

The 7 Costly Mistakes People Make When Turning their Big Idea into a Business, or when Branding or Rebranding Anything

The name is a key part of your brand identity. It’s possibly the most important decision you will ever make. It has the potential to make or break your business. Don’t entrust this work to people who don’t thoroughly understand the legal dimension of names. Or if you do, then be sure to include trademark advice in the mix.

Involving a trademark lawyer who “gets” branding to help you to identify a new name is the ideal. It is the most cost-effective way to get a name that makes your idea sing. Why? Because such a lawyer will understand both the marketing and branding function of a name and the trademark and IP dimension. IP is one of those subjects where a little knowledge is a dangerous thing. On the other hand, using a lawyer who doesn’t understand branding might not give you the best business solutions, even though you will get good legal advice.

There is a lot of legalities around names. You need to know which ones are ownable or are already taken. You need to understand which names will be liked by the ideal client so that they can be effective from a marketing perspective.

People often get help from a designer to choose a name even though there is nothing about names that requires graphic design input. While some designers may have expertise in naming, the vast majority do not. They may do one or two naming exercises a year, if that. So, they don’t know as much about names as they need to know. Some I’ve come across tend to choose unsuitable names from a legal perspective. Many of them assume that the right to use a name comes from domain or company registration. That’s all the checks they’ll do, and sometimes they don’t even do google and domain name checks. Most don’t check the trademark registers and leave you to get the name checked out by your own lawyers,

Make sure you consult a trademark specialist if that’s the case. Your general business lawyer won’t be as well placed to assess whether the name is one you can stop others using and how difficult it would be to enforce your rights in that name.

It’s possible to register any name with a logo but what value does that give you if you can’t then stop competitors stealing your market share when they use the same name with a different logo?

If you don’t consult someone experienced in names, then you risk ending up with a trademark which effectively just protects the logo rather than the name on its own.

To identify a name that reflects your positioning, that is protectable as a word mark and that you can stop others from using in ways that confuse the market is something that requires a good understanding of trademarks and branding.

Inventors and entrepreneurs often believe that simple tasks like choosing a name for a new product do not involve legal consideration. This is not true.

For one thing, you could lose everything overnight, as Scrabulous did. The two Indian brothers that developed an app enabling people to play a word game online with friends anywhere in the world were unaware that using a name that was like someone else’s trademark would be a problem. Their app was a huge success, until Hasbro, the owner of the Scrabble trademark, found out about the company. Hasbro had no trouble getting Facebook to pull the app. So Scrabulous vanished from one day to the next despite having hundreds of thousands of users.

Had the two brothers realised that their choice of name could shut them down they would have chosen a different name for their online game. But they didn’t take advice from trademark experts to investigate the trademark implications of their choice of name. It’s just not worth the risk.

Although Scrabulous rebranded and got back on its feet, the IP problems were a huge set-back for them. Zynga was able to take advantage and enter the market with Words with Friends. It is now the market leader.

Even where you have limited resources, you should think carefully before foregoing help from a professional to carry out a search of the trademark registers.

Think of your brand name as if it were a physical plot of land, and your branding and business as buildings you would build on that plot. What you don’t want is to find that you’ve built on property that you don’t own. Ownership of your brand name is key before you build your brand.