Below is an excerpt from John McKeown’s April 2019 Monthly IP Blog.
It is a challenging process to pick a good brand name but a brand name is frequently of vital importance to the success of the underlying business. The brand must deliver the image consumers associate with it and the values it symbolizes. Typically, a two-stage process is followed to choose and protect a brand name.
The first step is to select potential brand names. There are many approaches, but the following represent the basic criteria to consider:
1. A brand name should symbolize the image and values desired to be associated with the brand;
2. A brand name should assure the customer that the goods or services associated with it will be of the quality or value expected;
3. The brand name must distinguish the brand owner’s goods or services from those of its competitors. The essence of a protectable brand name/trademark is its distinctiveness. The critical factor is the message given to the public;
4. The brand name should be simple and easy to understand;
5. The brand name should be easily remembered;
6. The brand name should be easily readable and pronounceable;
7. The brand name should be meaningful, communicate positive product attributes and avoid unpleasant connotations;
8. Carefully consider before choosing a coined word as a brand name since considerable financial resources and time may be required before the brand name becomes known.
The second stage of the process involves related but equally important matters including the following:
1. The proposed brand name must be legally available in the countries it is proposed to be used. The availability of the mark for use and registration must be assessed separately in each country, this means carrying out trademark searches. The perfect brand name is of no assistance if it cannot be legally used;
2. Consider the availability of domain names which include the brand name or a substantial part of it. With the new gTLDs there are frequently many choices;
3. Obtaining a trademark registration will facilitate the protection of the brand name by granting exclusive rights to the trademark owner and for providing public notice of such rights. Obtaining registrations is of vital importance for many reasons;
4. A brand owner should understand how the trademark system works when selecting a brand name since the decisions made will affect the rights potentially available in the future. Retain a lawyer who is knowledgeable in this area;
5. In a global market there are a multitude of linguistic and cultural issues which will affect the choice of a brand name. The pronounceability and the meaning of the brand name in each relevant language must be considered. Similar considerations apply to the design presentation of the brand name.
Goldman Sloan Nash & Haber LLP
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Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.