Tag Archives: naming

Top 3 Most Common Naming Mistakes

Although Interbrand’s ‘10 most common naming mistakes’ article is featured by Google as a top resource, it is more about getting the reader to think that naming is too difficult to do, so they’ll engage a specialist branding agency to help them to choose a name, than guidance for people looking to make a better choice of name themselves. Here is a list of the 10 Mistakes the Interbrand article mentions

Treating Naming as an afterthought
Forgetting that Naming is as strategic as it is creative
Underestimating the importance of a good creative brief
Confusing the need for information with the need for differentiation
Overlooking complex trademark issues
Ignoring global implications
Thinking everything needs a name
Making it emotional
Underestimating the story you need to tell at launch
Ending the verbal identity process at a name

Interbrand is a respected marketing consultancy, specializing in brands and branding management, and operates out of 24 offices in 17 countries. Although it won’t be obvious just from reading their list what the article has to say about these mistakes, the references to brand strategy and story, are not likely to be helpful to a small business owner aiming to choose a name, without the help of an agency.

Many Agencies Make These Mistakes

Interestingly, some of the mistakes the article highlights around trademarks and checking the meaning of the name in other languages are mistakes many branding agencies make when choosing a name for their clients. They invariably leave the legal dimension till the end of the project which is a clear sign that they don’t understand the entwined nature of names and legal availability.

Otherwise, they would do trademark checks on names before handing over to their clients. But they don’t do the most basic trademark checks. I can understand that they’d leave more extensive searching for the client to arrange themselves. However, most agencies hand over a name they’ve only checked out on Google, domain and company registers. It happens all too often that as soon we run checks on the trademark registers the names put forward by the agency for their clients are immediately knocked out. So instead of getting 5 or 6 names, they end up with just one name that merits a full search.

Naming Webinar

Interbrand is a worldwide agency. It was founded by John Murphy, who pioneered the art of brand valuation, that is, measuring the accounting value of a company’s brands as assets. He stimulated the development of branding as an aspect of business, and the agency has traditionally combined branding with intellectual property because they clearly understood the connection between the two. This understanding is sadly lacking in the small business sector in most parts of the world today.

It’s to address the gap that exists between brand creation and brand protection that I’ve introduced a new product, Brand Tuned, to support the small business end of the market to access IP expertise during the branding process.

For most business owners that don’t want to hand over a naming brief to an agency, and want instead to tackle the naming project themselves, it may be useful to attend my upcoming Name it Right! webinar.

Three Most Common Naming Mistakes

The 3 most common mistakes people make when it comes to choosing names which are noteworthy to mention here are:

Firstly, not giving yourself enough time to choose a name. The Interbrand article refers to this as treating naming as an afterthought. However, the problem isn’t so much that people treat naming as an afterthought as that they often need a name in a hurry because until they have a name, they can’t get on and implement their plans and set up that new business, or embark on that project. So, my advice is to either give yourself more time and focus on other aspects of your projects that don’t rely on you having the name sorted. If it’s possible in light of your business model, go with a temporary descriptive name while you test your concept. Then if it succeeds, rebrand. That might give you a year or more in which to come up with a good name to suit your business.

The second major mistake people make which the Interbrand article doesn’t highlight at all, is that they fall in love with a name and persist with it, despite the name not being available because someone else has already trademarked it. I’ve come across business owners who persisted with a name despite being made aware that someone else had already registered the same name as a trademark. In such cases I suggest the business owner sets aside a sizeable budget for future litigation, or for trying to buy the brand from the current owners, or for rebranding if all else fails.

And last but by no means least, the third most common mistake is to choose a name that’s too descriptive to function as a trademark. Descriptive names describe the goods or services too blatantly to be capable of being trademarked. Clubcard is an example of a name that was developed for Tesco’s loyalty card program by a big agency which they have not been able to trademark.

Descriptive names include British Telecom, Business Networking International, World Wide Fund, Hong Kong and Shanghai Bank etc. These businesses with descriptive names had to rebrand to find a name that was ownable. In such cases, businesses either have to choose a totally new name, or, sometimes they might be able to use initials. BNI, BT, and HSBC are examples of this. However, initials are not a good choice of name, except perhaps for the large well known household name brands like the ones in this example. Also, problems arise when the initials you want to use are owned by another brand. This happened when both the World Wide Fund and the World Wrestling Federation wanted to rebrand to WWF. It resulted in decades of disputes between the two entities until eventually, the World Wrestling Federation rebranded to WWE.

Descriptive names cause huge problems when it comes to naming and is one strong reason agencies should involve a trademark lawyer on their team if they’re picking new names.

The reason problems arise around such names is that most people believe that the more a name says on the tin what it is that their product or service does, the better. So they try to choose descriptive names.

However, if you choose utterly banal non-distinct names that are not ownable you miss the single biggest opportunity that is available to a brand to stand out.

Descriptive names are weak because they are not ownable. That means they are generic terms that everyone else who offers similar products and services need to use.

Such names don’t challenge, excite, or mentally stimulate us. They require little imagination. And they reveal nothing about the personality of your brand (other than exposing your lack of creativity). When you draw from a limited pool of descriptive words, you sound like everyone else, making your name blend in with competitors’ names.

Examples Hotels.com and Booking.com

Hotels.com spent a fortune trying in vain to register hotels.com as a word trademark. Recently, the US Supreme court has muddied the waters by allowing Booking.com to trademark its name. The court overruled the US Patent and Trademark Office’s finding that the .com name was too generic to merit protection.

The general rule in trademark law is that “generic” words that refer to an entire category of goods or services, like “car” or “computer,” cannot be protected under the law because that would give an unfair advantage to the trademark holder.

So, even though Booking.com has secured trademark protection, it is still much more difficult to enforce your trademark rights when you have a name that is borderline descriptive. They may not be able to trademark the name in other jurisdictions, so, your brand protection costs are going to be a lot higher than if your name was totally distinctive like, for example, Google.

If you’re choosing a name then sign up to my webinar where I’ll be explaining how to go about picking a name for your brand.

Is Branding A Superficial Cosmetic Activity or A Substantive Exercise?

This is a question I used to wonder about. Deep down I believed ‘brand’ and ‘branding’ to be essentially a surface, cosmetic exercise.

As for ‘personal branding’ the activity had connotations of people learning to be false and less than real. After all, if they spent time thinking about how they wanted to come across, surely that meant they would be artificial rather than authentic? Such people would be too focused on creating the ‘right’ impression rather than being themselves. This is what I used to think. I doubt I’m the only person who has thought in this way about a brand.

Where do prejudices like this come from?

I was wondering where such prejudices about ‘branding’ came from, and whether others share them.

Perhaps it has something to do with the fact that there was a time when brand was all about image. Did the hangover of that era create this impression of brand being superficial surface stuff, I wonder?

Now that my views have changed I don’t like to admit how I thought about branding. However, I think there is a benefit to examining such prejudices to see whether they are widespread and shared by others.

Meaning of design

As Steve Jobs put it “Some people think design means how it looks. But of course, if you dig deeper, it’s really how it works”.

In brand creation, the link between design and branding may be one reason the activity is perceived to be about surface veneer.

I remember a few years ago many of the big law firms were all undergoing rebranding exercises. Invariably this involved shortening of their names, unveiling new logos, colours, and slogans – but for all one could tell it was just new visual designs and business as usual. The businesses didn’t seem altered in any substantive way after their rebrands.

I could understand it more when a company like Norwich Union rebranded by changing its name and becoming AVIVA. Its old name was parochial and limiting. If the business wanted to be perceived as more international it definitely needed a name change and new identity.

Then there was BP rebranding from British Petroleum to BP, adopting the green colouring everywhere.

Yet that business seemed to lack an effective belief system to respond appropriately in the face of the oil spill disaster.

Their rebrand seemed to have been a surface exercise in design work. For all the information they put out about their values, none of these seemed to drive the business’ behaviour and response, and therefore seemed to be a surface, superficial exercise.

Branding books

I have read hundreds of books on branding, and now that I understand the anthropological and social basis of it I know it’s a really important tool in business if properly dealt with.

Clarifying your philosophy and how you mean to function as a business when setting up or rethinking any venture, be it a commercial undertaking or a charity, is crucial to success, provided those decisions are embedded within the business appropriately so that they determine how the business behaves and reaches decisions.

The trouble is that many people invariably assume this branding exercise involves working with designers to get a new visual identity. This is wrong thinking that needs to be debunked.

Branding is not just about the visual identity

The prominent association some people have with the brand and visual identity may explain why I and others have perceived the branding exercise to be cosmetic and surface, rather than having any deep meaning.

My own experiences of branding never allowed the amount of time and space one needs in which to think through the brand philosophy. The branding experiences were invariably spaced out over 3-4 weeks – which is insufficient time in which to make fundamental, profound decisions about your purpose and mission, values, and what brand promise you want to be known for etc.

A Design Brief

For a designer faced with a client that hasn’t done the work on their brand yet, the problem is how to deliver a visual brand identity. So, I totally get why the designer can’t just create a visual identity without knowing what the business is all about and wants to communicate.

The problem is that clients go to designers with no real design brief. So, designers invariably and necessarily need to ask questions and delve as deeply as it’s possible to do in the time available, in order to find out about the business, and its values.

That is the way to arrive at a brief from which to design the visual identity needs to change.

The fact that businesses have done inadequate thinking about their brand strategy before they turn to a designer is the root cause of the problem. It leaves it to the designer to tease out this information so that they can do their job.

Naming calls for different skills

It’s expecting too much of designers, who also have to come up with new names and slogans too to help their clients to embed their philosophy into the business.

The naming side of a brand is really an exercise that calls for completely different skills and shouldn’t be left to designers to deal with.

For naming and slogans, you need trade mark lawyers who could involve a copywriter or linguist to help brainstorm name ideas if necessary. Designers don’t need to be involved at this stage of the process. When you’re finding out who you are, why others should care, how you will operate and so on, you just need to work with a brand strategist that understands trade mark and other IP laws, and the marketing and other aspects of branding.

It’s only when that is all clarified that you need a designer to give visual expression to the brand.

You should choose a name once you’ve understood your target market and what resonates with that market. You don’t choose the name because of what it will look like in a logo. That would be rather superficial in my view, when naming something, to be worrying about its visual manifestation as a logo.

Ideal Process

The ideal branding exercise to give a business a brand that will be its central core and soul is one where you spend many months working out your business brand, and brand strategy, including your positioning. Only once that stage is completed would you be ready to identify a name and slogan.

This is why we have created a brand strategy offering for our clients. We can then give guidance to clients on names. I have spent years studying and understand brands – having realised it’s the optimum way forward to give clients the best possible outcome for their brand work.

Not all trademark lawyers can offer such a service yet because the lawyers would first need to thoroughly understand what’s involved in a branding exercise so they can help you create a suitable name and tagline.

So, I want to emphasise that the expertise that’s needed during this first phase is NOT design related. You’re thinking through things like what marketing messages will resonate with the target customer. Is the chosen name or slogan one that the customer would respond to? Is it capable of functioning as a trade mark? Is it available? Does it reflect the positioning without actually describing the activity? Who better to work with at this stage of brand thinking than a trade mark lawyer who has undergone a solid training in brand?

Your brand is what drives your business, a set of promises and assurances that customers should think of when they see or hear your name. It is your unique identity that resonates with your target audience and differentiates you from your competitors. The name and slogan are the root of that identity.

When it’s Appropriate to Seek Designs

Once this first stage of the brand work is completed, and appropriate legal checks have been carried out, and trade marks registered, it would be appropriate to turn to designers to create the visual brand identity.

The exercise that began with IP first to assess which IP rights are most important to the business model, and concluded with legal protection of the brand identity, would mean the legal identity would be firmly and correctly sorted out and locked down. So, a detailed brief could be produced for designers to create the visual identity.

Given this level of detail, the designers would at the very most need a one-hour meeting with the client to get the information they need to produce the visual identity.

Approach to Branding

This approach to branding should be what small businesses do, because it brings down the overall costs for the client. The visual identity costs will be a fraction of the price designers now need to charge. The visual design price would therefore drop because designers no longer need to spend time learning about the business and teasing out its mission, values and so on. Nor would they need to do work that they’re not well placed to do, such as devising new names and slogans.

As such the client is the winner. They have much greater clarity about their brand when constructing their business model and I suspect this would impact their success rate in business because they could design the business correctly and be better placed to build on solid foundations.

So, I advocate separating the legal identity and brand strategy from the visual identity. They need different advisers. Azrights supports clients with brand strategy and naming, while the visual identity is then undertaken by designers who we can introduce, or you can find yourself.

Brand Guidelines

Another difference in the outcome is that instead of the brand guidelines being focused purely on the visual dimension – the logo and colours, the client would get two sets of brand guideline – one focused on the brand strategy, covering issues such as communications and embedding the brand into the culture of the business, while the visual brand guidelines would focus on use of logos and colours, as they do now.

With the correct strategy, your brand will gain in value over time. This value will come from the positive reputation your business develops. For more information read my earlier blog on how to establish your brand.

Branding For Success

I presented this presentation at Triumphant Event’s one day ‘Make it BIG in 2013’ event on November 24. For those who missed it, here is a transcript of my speech along with the accompanying slides.

To thrive in a crowded market, a business has to be clear about its niche, positioning, brand values – its whole identity – which should then be reflected in appropriate designs. This is essential if you’re to become a brand in the sense of having pre-sold clients who want to do business with you. That’s how you stop having to compete on price. However, what is less well-known is that there are fundamental Intellectual Property issues that must be addressed if you’re to reap the benefits of your success. I’ll be discussing some of these IP issues in the next 20 minutes as they’re important if you’re aiming to make it big in 2013.

I’ll just say a few words about my background before I begin. I’ve practised IP law for nearly 15 years, having qualified as a solicitor more than 25 years ago. I worked at Coopers & Lybrand, Reuters, and Eversheds before setting up my own law firm 8 years ago. Going into business on my own made the legal work really enjoyable in a way it had never been before. I love helping businesses to bring their ideas to life and one area of my focus is on names, as they raise a number of legal issues, some of which I’ll touch on here.

Inevitably when you work in an area you spot problems, and one I’ve noticed is the widespread confusion about what ‘branding’ actually is. To a designer a brand is the logo. A marketer may emphasise the niche, and positioning, while a communications professional will stress the importance of consistent messages, and an IP lawyer will emphasise trademarks and copyright. The fact is that the skills of many different professionals are relevant to branding. So it’s not surprising that people don’t really know who to turn to, and in what order when they brand new products and services. And that includes people in the branding industry. A very experienced and well-educated marketing director contact confessed that he didn’t really know in what order to do things when he wanted to create a new brand.

This explains why companies so often make mistakes with branding. In practice, they’ll pick a name they like, see if the domain is available and buy it, then they’ll commission someone to produce a brand identity. At the very end of the process they may or may not turn to a lawyer to protect the brand. Some people do nothing at all, while others might register a trademark themselves. This puts a business at great risk of either using a name which infringes on someone else’s rights or of using a name that’s inadequate to meet the wider long term business objectives. The reason the risk of infringing a name is quite high is that the trademark registers are cluttered with registrations so that it can be difficult to find names that are available to use for the various purposes for which you may need to use the name. Also, using similar names to those which someone else has already trademarked is an infringement, so it’s not just the exact same names that are out of bounds.

It’s worth knowing that if someone else has a better right to a name you’re using, you would be infringing on their rights whether or not you may have registered a domain, a company or even a trade mark. Registrations can be and are cancelled. The owner of a similar trademark may not be aware of you or may not be concerned while you’re a small scale operation. It may be a different story though if you make it big. Imagine what it would feel like to receive a cease and desist letter requiring you to change your name immediately, to provide a list of your customers, sign an undertaking and pay damages. From the perspective of the trademark owner, you only achieved your success because you were riding off the back of their brand, so it’s fair enough to ask you to account for the profits you made during the time you used their brand name.

A name is where your brand both begins and ends. It’s the first thing customers hear when they discover your business, and the last thing they remember at the end, so it’s vital to own the rights in your brand name. Intellectual property law is similar to the law of physical property. If you were developing a plot of land you’d be sure to buy the land first before investing in building on it. The last thing you’d want would be to run the risk that someone else had better title to it. It’s the same with intellectual property rights over a brand name. Don’t assume the professionals who may have helped you to brand your business must have taken care of the IP aspects because it’s unlikely they’ll have done so. Their expertise is not in IP law. I wrote my book Legally Branded, because of the widespread lack of accessible information on the IP aspects of branding.

It’s not possible to have copyright in a name, no matter how much money you may have invested in creating a name. Trademarks are the only way to stake your claim to a name. Trademarks are tools to capture the economic potential in your business, and are central to how the law protects a business against unfair competition. Trademarks give you legal title to a name, and exclusive right to use it for your business. This makes it easier to enforce licensing and other agreements. Some entrepreneurs assume trademarks are just about protecting goodwill, but they’re much more than that. The reason a trademark is desirable is to monetise your business. You don’t need to be intending to be the next Coca-Cola for trademarking to be relevant to your plans. If you have a big vision you’ll need trademarks to grow the business, both nationally and internationally. The right strategy for registration will differ depending on your business plans and the type of business you’re in. With some niches you are very vulnerable unless you are quick to register your mark in other countries once your concept takes off.

Trademark infringement is something I come across a lot because it’s quite common given the way in which business owners pick names. So, it’s a real risk not just a theoretical one. Having the distractions of potential litigation and rebranding is not a risk any sensible business owner should run. I don’t want to depress you, but it’s important to realise that you could be sitting on a time bomb.

Let me give a couple of examples. Mcdonald’s takes a somewhat aggressive stance to users of the ‘Mc’ prefix. So Elizabeth McCaughey had to stop using the name McCoffee for her coffee shop even though she had operated for 17 years with that name, and used the name in the first place because it was a play on the word in her own name.

Some businesses that are infringing on the rights of a trademark owner have to rebrand virtually overnight. For example, Scrabulous one of the first Scrabble like games on Facebook was removed by Facebook as soon as Hasbro complained about trademark infringement despite having gone viral. We will never know how big Scrabulous would have been today if it had opted for a better name. The setback cost them dearly as it paved the way for Zynga to enter and dominate the market with its successful Words with Friends app.

A different aspect to consider about the name you’re using is whether it’s capable of taking your business to the heights you envisage for it. For example, using a name that says what your business does on the tin, so to speak, often appeals to people. But there are powerful legal reasons why a descriptive name should be avoided. Descriptive names inevitably limit a business’ potential. They’re only suitable as an option in the early stages of a business that’s testing the waters with a new concept, and wants to avoid trademarking considerations, and to benefit from a name that communicates what it does. However, a better name should be chosen as soon as the concept proves viable. A descriptive name is actually devoid of personality. It’s like calling a dog, dog. You’re not giving that dog its own unique name, and identity, and it’s no different when branding a business. A trademarkable name protects consumers by providing a reliable way for them to find products they’ve bought in the past. If I’ve enjoyed a chocolate called Milky Way, and want to buy another one, I should not be confused by seeing chocolates with names like Mulky Wai. The law will stop other traders calling their chocolates by a name that’s misleadingly similar to Milky Way, but if the chocolate has no name, because it’s simply called chocolate, the law cannot and will not stop other chocolate sellers also calling their chocolate bars ‘chocolate’. So, if a competitor starts using the same name or a similar name to yours, there’s little you can realistically do to stop them if yours is a descriptive name and you inevitably lose some of your potential customers to competitors.

To understand the limiting effect a descriptive name could have on a business let’s use a fictitious example. Say there’s a website which connects dog owners looking to leave their dog with other dog lovers instead of in kennels when they’re away on holiday. If the website were called Dog Vacation it could be deemed descriptive. If the name couldn’t be trademarked, the website’s success couldn’t be fully exploited through licensing others internationally to set up and run similar websites in their home market. In fact, such a niche website has been created just in the past year in the USA, and luckily its name is capable of legal protection because it’s called Dog VACAY, not Dog Vacation. This business currently has a multi-million dollar value mainly due to the lively and active community of dog lovers it has given rise to.

Apart from licensing people in other countries, exploiting the value in an engaged community, such as Dog Vacay could include extending the brand into areas such as pet foods, pet furniture and accessories and so on by licensing others to apply the brand name to their products. So the bottom line is that licensing depends on having a name you can stop other people using. You would register a trademark in your home country and then ultimately in other countries if you’re to avoid seeing your business copied by unlicensed individuals elsewhere who may even use the name Dog Vacay unless the US company has been astute enough to register a trademark in other markets as well as in the USA. It inevitably reduces the value of your business if you can’t properly control use of its name.

There are a number of do’s and don’ts around what makes for a good name, but the most important thing to remember is that a name must be legally effective, and capable of getting you to your destination. It’s not just about whether you like a name or whether it sounds good or even whether it is capable of being trademarked. It needs to be a name that suits your business plan and objectives. One reason businesses have been attracted to descriptive names in the past, is that Google historically looked favourably on domain names that included relevant keywords. For example, dogvacation.com would be likely to come up in a search for “dog vacation”. However, Google discovered that this led many low quality webpages to appear in search results, as marketers were taking advantage of descriptive domain names to increase visibility. In response, in September Google tweaked its algorithm to give less weight to domain names which are an exact match for a search query, so even this limited benefit is no longer a worthwhile reason to use a descriptive rather than distinctive name for your business online.

Zumba the dance is a great example of an effective name for a business that spread like wildfire internationally, as well as extending into all sorts of different categories like DVDs, clothes, and so on. So, make sure you’ve got the right name if you want to make it big because the wrong name will put a ceiling on your ultimate business growth, no matter how good a business you build, and how effective you are as an entrepreneur. Once you have a powerful name, put in place appropriate IP protections and a strategy for international trademarking. That’s the way to bulletproof your brand so there are no limits on how your business can grow once it captures the public’s imagination in 2013. I wish you every success in the upcoming year.

If you’re interested in learning more about this topic, why not buy a copy of Shireen’s book Legally Branded which is available on Amazon? You can download the contents and the first chapter free at www.shireensmith.com.

if you’re interested to understand this topic more why not buy a copy of Shireen’s book Legally Branded which is available on Amazon, and you can download the contents and first chapter free at www.legallybranded.co.uk

How to Pick a Winning Name

In the early days of the internet when the web was like a small village which has just one bread shop, one toy shop or one other type of store, it was understandable that businesses were drawn to names like toys.com or books.com or hotels.com as business names not just as domain names. But with the crowded marketplace that the web has become, why would anyone want to choose such non distinctive names for their business?

Now don’t get me wrong. These are great domain names because they’re fantastic for generating traffic. But as business names they suck. Why? Because you can’t get exclusive rights over such names by way of a trade mark. See Hotels.com case which recently failed to get a trade mark despite having traded with this name for some 20 years. Sure you can register the name with a logo, but that effectively protects the logo rather than giving you a monopoly over the name.

Failing to secure a trademark over a word means that you can’t stop others using the word to attract business. So, you set yourself up with an inadequate name for brand protection. This inevitably affects the brand value too.

Imagine if Google had named itself searchengine.com. Would it have the name recognition and brand it now enjoys? Of course not. The fact that it has become one of the world’s top brands today, has quite a lot to do with the distinctive nature of the name itself.

Reading the Law Society Gazette about the aspirations of a new grouping of Law Firms QualitySolicitors one of my first thoughts as a trade mark lawyer was ‘what a poor choice of name’. Then I had a look on the trademark registers and sure enough they have had to abandon their application for the word mark, and console themselves with a logo trade mark which is currently being advertised.

They won’t be able to stop me or anyone else bidding on Google adwords for the term Quality solicitor. If they aim to become THE first household name as a solicitors brand, they should immediately rebrand and drop this misguided name. The sooner they find themselves a distinctive name the better for them. Michael Scutt also has advice for them in his article here.

When you start out in business or in any venture at all begin as you mean to go on. Assume that you will be the next major brand in your industry, the next Google, Amazon, or Nike. One thing you will notice about each of these, is the distinctive nature of the brand name they have chosen, unrelated to their target market, but memorable. If you choose a name that describes your business there would be nothing standing in the way of competitors providing similar services, under a similar name, and you would be one provider amidst a whole host of others. If you rebrand at that time, think of all your wasted advertising expenses in becoming known under your descriptive name! You would then have to spend even more letting people know about your new name. Getting it right at the beginning has to be the answer.

Branding is extremely important in business, and if only more businesses appreciated the need to consult a trademark lawyer before settling on their name. They would then know how important it is to do everything in their power to choose a distinctive, memorable name, and to protect it.