Naming your brand

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Key points

Trademark law is complex, and can vary from country to country. This commentary is intended to provide a general overview and not legal advice specific to your situation. Please consult a lawyer for legal advice before proceeding - your trademark may be worth US$ billions.

Trademarks

Naming your brand is one aspect of developing a brand identity that can be trademarked. Other elements are:

• graphical design (the Nike® "swoosh", the Coca-Cola® bottle design)
• type face
• use of color (the Post-it® Note yellow)
• sounds (the Microsoft® or Intel® tune)

Prior considerations

For trademark purposes, brand names fall into one of four categories:

1. Descriptive words - where the name describes the activity (cars.com, booksetc.)
2. Suggestive words - where the name suggests the activity (K-Mart, ask.com)
3. Real words in an unrelated context -The Sun®, Apple® , Yahoo®
4. Made-up words - Kodak® , Xerox®

If your trademark is infringed, descriptive names are the least easy to protect as they may belong to the category as much as to you. They are therefore difficult to register, and are the most likely to have had prior use or to have become generic - which will defeat your trademark (even a registered trademark) in many countries. Made-up words are the most protectable as you can more easily prove that you introduced that name to that particular category of products. However, what is descriptive in one language, may not be in another - so you may be able to register a descriptive trademark in a foreign language in some countries.

You will also want to register your brand name as a domain name on the Internet. This is generally on a first-come, first served basis. If you get the name first, you win, so it does not matter if your domain name is descriptive. Arguably, it may even be an advantage for lesser -known brands. However, in the "dirt" world, many descriptive dot com names will not be protectable.

There is an exception to the first-come, first served rule for domain names, and that is where you are "cyber squatting" - you have bought the domain name associated with a well-known brand expressly in order to extract money from that brand for the domain name. This procedure is currently the most clear cut under U.S. and UK law where several major brands have taken legal proceedings to "get their domain names back" - Madonna and FCUK being recent examples.

Developing a name

While several companies offer expensive naming services, often using software that randomly generates names, you can just as easily develop a name yourself - just make sure to develop 20 of them, so that you end up with at least one, after you have researched them for availability, protectability and meaning.

It can cost $250,000 - $500,000 to research and register a trademark globally in a number of related categories, and to buy the associated domain names (however, equally, it can cost US$1 billion to develop a leading global brand). Trademarks are registrable by category - the same name can be registered by different companies if one is selling confectionery and the other safety products.

Registering domain names alone is considerably cheaper - you can research domain names for free using one of the registration companies, and buying all three of the main global names (.com, .net and .org) will cost you around $250 for 2 years. You will probably be offered free hosting for a small web site at the same time. Larger corporations usually register a whole series of domain names around each brand to cover all possible spellings - they then use the additional names to "point" to the main domain name.

When you are developing a name, some of the key rules are:

• Do not infringe anyone else's trademark in the same or related category of products/services by creating a name so similar to it as to constitute "passing off"
• Preferably create names that have no specific meaning, positive or negative, for that category of products. If they are positive, they will probably not be registrable or protectable. If they are negative, you may fail to attract customers (there are lots of hilarious examples of this - the General Motors marque "Nova" in Spanish means "doesn't go"; the Rolls Royce marque "Silver Mist" means something rather lavatorial in German)
• Focus on developing names that are short, memorable, spellable (globally) and likeable. This is particularly important for domain names where customers have to actively search for the name, rather than passively recognise it. However, even in the "dirt" world, long names can cause problems. There is a phenomenon termed "call branding" where customers adapt your brand name to their own purposes - usually when it is too long. For example, in the beer category, Samuel Adams has become "Sam Adams" and Budweiser has become "Bud". If the brand name as it is actually used by your market becomes separated from your trademark, you may find yourself confusing the customer (although, in many countries, you will probably still be able to claim ownership of the trademark)
• Remember that you may have to transliterate the name into different alphabets - Roman, Cyrillic, Arabic, Chinese/Japanese ideograms etc. - in order to have protectable trademarks in countries that primarily use those alphabets

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