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The Brand-Naming Process: Companies Need to Do More Than Search, Click

By Drew Letendre

When are some of our most ubiquitous technology tools a reliable source of unnecessary confusion and mistaken conclusions? In conference rooms, some of the best-known, best-named brands in the world — Google and Bing, Galaxy and Android, iPhone and iPad — are making the work of naming companies, products and services even more challenging than necessary. Consider this a cautionary tale about how instantaneous access to information can cause our reach to exceed our grasp (in this case, of the basics of trademark law and its bearing on naming.)

Although BrandingBusiness is not an agency with an in-house legal function, as a matter of protocol and due diligence, we immerse ourselves as best we can in the salient concepts of trademark law: confusion, dilution, common law, resemblance, IC class, etc. The last thing we want to do is tantalize clients with names unlikely to pass legal muster.

We make all of this screamingly clear to clients before we table candidates. But this hasn’t stopped them from getting into the act. They’ll begin to Google and Bing the names shown on the screen at presentations, as they’re encountered in real time, on their phones, laptops, and tablets. This can lead to something resembling chaos. Presentations get sidetracked as faux conflicts are triumphantly adduced via the Internet.

As a “Namer” who has encountered this phenomenon directly, as a witness and “victim,” I bring it up as a kind of foil or pretext for discussing several issues related to trademark law that merit a little healthy public ventilation. Who knows? Businesses considering a name change or product naming might read this and, lo and behold, adjust their presentation behavior accordingly. If not, we’ll be invoking the same request now routinely uttered in cinemas, performance spaces and churches: “As a courtesy, please turn off, put away and silence your mobile devices.” However, in the context under discussion, this is less a matter of courtesy than of avoiding confusion.

That said, I take it as a given that clients may find products or businesses already using a mark under consideration. And although this is not a de facto obstacle against their use of that mark, they often think it is. The common assumption is that marks are absolutely exclusive, when, in fact, they’re not. Indeed, these days most names have existing users, pending applicants and prior registrants. That’s just how it is. Relevance and the risk of confusion are what matter. Confusion being one of two key legal standards that must be clearly understood (the other is Dilution, about which more below).

Specifically, the simultaneous use of two or more resembling marks must not create confusion in the mind of a relevant consumer as to the true source of goods and services. Imagine the following scenario*: A software startup calls itself Lexis. The name, except for the last vowel, is identical to the Toyota luxury car name Lexus. In terms of sound, they’re virtually indistinguishable. One test of whether the risk of confusion exists in this case is if the hypothetical software consumer goes to a Lexus dealership looking to purchase Lexis 2.0 and/or whether the hypothetical car buyer shows up at Office Depot or Fry’s to test drive an ES Sedan. Fat chance.

* I owe credit to Tony Spaeth for this example, which appears in a white paper that resides on his website: www.identityworks.com.

But that’s not where the assessment ends. The other standard that applies here is Dilution, which can occur when a “secondary user” has a mark closely resembling a “famous” mark. Dilution statutes are designed to protect well-known brands against the equity-eroding infringement of would-be users seeking recognition on the cheap. Another example (this one real): Nikon (cameras) sued IKON (office products) for infringement — the sole difference being the presence in one name and the absence in the other of the letter “N.” The gravamen of the case concerned Dilution, not Confusion. Nikon lost, but it fired a shot across many bows: “Don’t tread on me.”

How fame is understood and defined by the law is another matter. Like pornography, it is easier to point to examples than to articulate in words. We know the usual suspects: Coca Cola, McDonalds, Nike, Apple, GE, Microsoft, IBM, AT&T, Ford, and HP, to name a few of the most obvious. In some respects, Dilution is easy enough to avoid. The shoals are clear and there’s plenty of room for circumnavigation. Confusion is more like a minefield.

The nuances of trademark law notwithstanding, clients armed with mobile devices and Internet connections are more likely to prematurely reject viable names, based solely on the fact that other businesses have them registered. Or, conversely, they’ll find a name that is not registered but, unbeknownst to them, qualifies for protection under the common law principle whereby six or more years of exclusive use in commerce can confer protected status. They may also assume that descriptive names render the legal issues mute. Not always so. The Doctrine of Secondary or Acquired Meaning applies in rare instances to names that may strike the ear as utterly generic. It states that when a certain product or services comes to be identified exclusively with a name over time, even a descriptor — which would otherwise not qualify for a trademark — may become eligible for protection. It supervenes upon the strength of the identification, measured in various ways.

At the root of both Confusion and Dilution is the concept of Resemblance. It comes in many forms: resemblance in sound and spelling; identity (absolute resemblance) versus similarity (resemblance by degree). Then, there is visual resemblance (i.e., between the graphic dress of the names). Also to be considered is categorical resemblance between the goods or services named: are they in the same “IC class” or in an “adjacent” class? Are they sold in the same (geographic or other kinds of) markets? The more kinds of resemblance that hold between marks and what they designate, the greater the likelihood of their being confused or—in the case of famous brands—the greater the risk of dilution.

Now, you may turn on your cell phones.