THE NAMING NEWBIE

The first scenario involves a business owner about to (a) open a new facility, perhaps a restaurant, bike shop, etc., (b) launch a new product, perhaps a line of construction equipment, nutritional supplements, etc., or (c) offer a new service, such as mobile pet grooming, software-as-a-service, etc. After months of brainstorming, bouncing ideas off friends, and assessing competitor’s names, the business owner has fallen in love with a name. They dream about it, the products they are going to see on store shelves, or the signs displayed in front of hundreds of franchise locations, all displaying their beloved name.

The business owner is mentally committed to the name; after all, it’s perfect. Only after seeking the opinion of a trademark attorney do they realize there are cracks in the foundation and risks to be considered. Maybe the name is unlikely to be protectable with trademark registration because it is too similar to a prior registration, describes the product or service, incorporates a common surname, or is geographically descriptive (or misdescriptive). Or, there may be such a glut of similar unregistered uses of names that even if trademark registration is achieved, the enforceable scope of protection would be so narrow that it has no teeth and little ability to keep others from using similar names; not to mention the potential risk of one of these prior “common law” users taking issue with the name. Worse yet, the name may be one that will piss off an established brand owner, resulting in an opposition proceeding, cease and desist letter, or actual litigation.

Now the deflated business owner must wrestle with the fact that their beloved name may not be as great as they thought, and they may face the stages of grief (denial, anger, bargaining, depression, and acceptance). Sadly, we see many naming newbies get stuck in the bargaining stage, rationalizing why they should stick with their beloved name; a mistake whose consequences may not be fully appreciated until years down the road. The fortunate few that recognize the gravity of the situation and go back to the drawing board often repeat the vicious cycle over and over, hopefully getting better each time. Finally they arrive at a name they can “live with,” but become incredibly frustrated in the process, wasting time and money, and often feeling that nothing can live up to their first love, that first name they had their heart set on.

THE NAMING VETERAN

The second scenario centers around a naming veteran that has survived the “naming newbie” process a time or two.

They are wise and realize that the product naming process is iterative in nature. Along the way they have learned that when making a significant investment in a launch with a new name, hiring a naming expert will generally ease the process. When it goes well it is a fun process for all involved and the result is a great name that is protectable. Unfortunately, the really seasoned veteran knows what happens when this process goes off the rails. The most common reason a professional naming project goes off the rails is that the appointed naming expert focuses too much on the creative process and blue sky vision of a brand, and very little on trademark protection and legal risks.

What do I mean? Well, every naming expert is going to say that they do some form of “trademark clearance,” most commonly referred to as knock-out searches (and good luck trying to pin them down regarding the scope of the clearance and the qualifications of the person performing it). Most brand naming gurus will say such “clearance” is performed at various stages throughout a product naming project, but cautiously will always advise that the client is responsible for the final trademark clearance and protection. In reality this “guru speak” can generally be translated to “we have an intern, or an assistant, with no substantive legal training, play around on the trademark office website and see if any obvious landmines jump off the screen and slap us in the face.” Having read “scenario 1,” I am sure you can predict the outcome.

Unfortunately, things generally don’t go off the rails in the professional naming process until after the team has been sold on a name and a vision for the brand. Then, upon conclusion of the naming project, a brand manager takes the name to their in-house legal team for final clearance and protection, which is the point at which the cracks in the foundation are revealed. What happens next? Well, I am sure every seasoned veteran has their own war stories regarding uncomfortable conversations with branding agencies, but a good result would be another round through the process, hopefully at a greatly reduced fee and involving substantive legal clearance at multiple points in the process (and this is assuming the relationship hasn’t been ruined by a blow-up between the parties).