What's In a Name? Legal Considerations in

Corporate branding is a crucial component of the advertising, marketing, and public relations functions that build recognition and sell your products or services.  The process of choosing a company or product name is an expensive and sometimes lengthy one, but can prove even more costly if done without the necessary due diligence.

Branding involves the selection of a word, phrase, logo, or some combination thereof to identify a company, good or service.  Therefore, it necessarily involves trademark law.  A strong brand is one that not only communicates your client's message in a powerful and intentional, but one that is legally protectable. 

There are basically three levels of trademark clearance during the branding process.  The first is availability - is the mark your client wants to use available, or does someone else have the same or a very similar name that could cause confusion among consumers?  The second level of clearance is registerability - if the mark is available, will it hold up to scrutiny by the trademark office to be registered as a trademark?  The third level of clearance is protectability - if the mark is registered, will it stand the test of time, or might it either be too trendy or become generic in your client's industry (remember that the term "aspirin" used to be a trademark!)?

Certain types of trademarks are stronger, and therefore more likely to be registered and enforceable, than others.  A common pitfall in branding is to select a name that is so descriptive of the attributes of a product that it cannot function as a trademark.  The strength of the mark will be determined by the connotation of the words you choose.  The strongest marks are coined or fanciful phrases, those that have no meaning in ordinary language (such as XEROX).  Marks that are arbitrary, those that have meaning in language but not in connection with the products they identify (like APPLE computers) are next on the strength continuum.  Somewhat lower on the ladder of protectability are marks that suggest an attribute of a service (think BUDGET car rental).  Finally, descriptive terms are the weakest, least protectable marks (such as INSTANT coffee).  In other words, the less descriptive the name, the more registerable and protectable the trademark.

The safest course of action is to have a full trademark search done before putting any brand or company name into use in connection with a product or service, and to seek a legal opinion early in the process in order to avoid spending too much time and client funds developing a brand that must ultimately be abandoned.

By Sharon L. Toerek.  Copyright 2000-2008 Sharon L. Toerek