How to select a strong brand name?
Your brand name is the cornerstone of your business identity.
Iconic brand names such as Coca-Cola, Apple and Macdonald’s worth billions of dollars. This is the value of the actual brand names, not the businesses themselves.
For smaller businesses, your brand name can be pivotal. It might not ever become worth billions of dollars, but it is essential to your business.
1. What is a “strong brand name”?
A marketing professional once told me that the more descriptive a brand name is the stronger it is. For example, the name “colourful kids clothing” tells you exactly what you are going to get, children’s clothing that is colourful.
When I talk about a “strong brand name” this is not what I am talking about at all. In fact, I am talking about virtually the opposite.
The less descriptive the name is of your business, the more distinctive it is. From a legal perspective, it is much easier to register a business name or brand name as a trade mark if it is not descriptive. The reasoning behind this is that others in your industry might need to use those descriptive words.
This is not to say that you should select a name that has no descriptive elements in it whatsoever. Something that hints at your goods or services is often acceptable for trade mark registration. If you already have a business name that is descriptive, you may be able to get it registered as a trade mark by adding a logo to the trade mark, but such protection would be weaker than if you are able to register the word on its own.
2. Choose something distinctive
A distinctive brand name is generally one which others in your industry would not wish to use, other than in order to trade or for your reputation.
A good example of this is the “Apple” trademark for computers, phones and other electronic devices. No one else in the world hurtful to use the name of a fruit in respect of these types of goods until Apple Inc. did so. Anybody else now trying to call such goods Apple, will clearly be infringing.
On the other hand, if you are a business coach and you call yourself “excellent business coaching” your business name will be very difficult to protect by way of trade mark registration, because of the descriptive nature of this name. Also, it might not be very easy for your clients to remember.
Distinctive trade marks often have a mental image that people can associate with the brand name.
3. Make sure it does not already belong to somebody else
If somebody else a registered as a trade mark similar to your registered business, your use of that name will amount to trademark infringement even if:
a. You have that name registered as a business name,
b. You use the name before the person registered the trademark.
So, if I see your great business name and register it as a trade mark, I can stop you from using your own business name. You also may have to pay damages for any profits I made under that name.
There is a way overcome this threat, if you have $100 000+ to take it to court and remove the registerd trade mark, but most small businesses do not have money to do so.
I have lost count of how many clients have come to me either after they have received a cease and desist letter alleging that they are infringing somebody else’s trade mark, or wanting to secure trade mark protection only to find that one of the competitors has registered the name first.
One of my clients had some brochures printed with the trade mark “be the star that you are” printed on them. This slogan had come to her while she was working on her business, she had never heard it before and honestly believed that she was the originator of this beautiful slogan. Being an intellectually property savvy business owner, she asked me to register the slogan for her as a trade mark.
She was very shocked to discover that somebody already had that slogan registered as a trade mark. Her only option was to scrap those brochures and not use the slogan anymore. She also very kindly gave me permission to share her story with other small business owners to help you make sure that you do not fall into the same potential trap of believing you have rights to use a name when you may not.
My blog next week talks about how to protect your brand name and avoid a potentially costly trade mark dispute.
Cathryn Warburton is an internationally award-winning solicitor, patent attorney, mentor, author and speaker. She is The Legal Lioness with a passion for safeguarding her clients’ business and intellectual property interests. She founded Acacia Law when she realised that law firms run by old men were too inflexible to empower her to tailor her legal solution to each client’s needs. www.acacialaw.com
* For privacy reasons, some details may have been changed. Please note that this blog is provided for general informational purposes only. Each legal situation differs. Reading this blog cannot replace obtaining specific legal advice. We recommend that you obtain legal advice for your specific situation.